Kaspersky Lab Zao v. Paul Bonsey / LeByte
Claim Number: FA1363673
Complainant is Kaspersky Lab Zao (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, New York, USA. Respondent is Paul Bonsey / LeByte (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kaspersky.us>, registered with GoDaddy.com, 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.
Jeffrey M. Samuels as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 15, 2010; the Forum received a hard copy of the Complaint on December 27, 2010.
On December 16, 2010, GoDaddy.com, Inc. confirmed by e-mail to the Forum that the <kaspersky.us> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 27, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 17, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on January 17, 2011.
A timely Additional Submission was received from Complainant on January 24, 2011.
On January 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Kaspersky Lab Zao, which was founded in 1997, 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. There are more than 300 million users protected by Complainant’s products around the world. Kaspersky Lab is headquartered in Woburn, Massachusetts and has offices in over 20 countries.
Complainant owns a number of United States trademark registrations for marks that incorporate, in whole or in part, the term KASPERSKY, as used on or in connection with certain computer software and programs and computer network design. See Complaint, Annexes 2, 3, and 4. Complainant also owns a Community Trademark registration for the mark KASPERSKY. See Complaint, Annex 5. Each of Complainant’s marks was registered prior to registration of the disputed domain name, which was registered on July 17, 2004. Complainant also owns a number of domain names that incorporate the term “kaspersky,” including <kaspersky.com>, <kaspersky.co.uk>, <kaspersky.ru>, and <kaspersky.eu>.
Complainant contends that the disputed domain name, <kaspersky.us>, is confusingly similar to Complainant’s KASPERSKY mark. It points out that the domain name incorporates the entirety of the mark and merely adds the generic country-code top-level domain (ccTLD) “.us.” According to Complainant, “[t]he addition of a ccTLD is irrelevant in distinguishing a disputed domain name from a registered mark….”
Complainant asserts that Respondent does not have rights or legitimate interests in the subject domain name. Complainant indicates that the disputed domain name resolves to a blank website with a login box requiring a user name and password from visitors. See Complaint, Annex 6. Upon entering incorrect login information, an error message stating “You are not authorized to view this page” is displayed to visitors. Respondent’s failure to make active use of the disputed domain name, Complainant declares, does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. Complainant also maintains that there is no evidence to suggest that Respondent is commonly known by the disputed domain name.
With respect to the issue of “bad faith” registration and use, Complainant contends that Respondent’s failure to make active use of the disputed domain name constitutes bad faith registration and use. Complainant further notes that Respondent operates an online computer hardware and software store called LeByte at the <www.lebyte.com> domain name and states in the “About” section of the LeByte site that his certified technicians can service a wide variety of personal and business computers and related equipment. The site includes a picture and description of Complainant’s anti-virus and internet security software products. This indicates that Respondent “must surely have been aware of Complainant at the time the disputed domain name was registered on July 14, 2004.”
B. Respondent
Respondent concedes that he was aware of Complainant at the time he registered the disputed domain name and, in fact, had been selling KASPERSKY products in the U.S. for eight years. Respondent indicates that “[b]efore registering the domain [in 2004], I had been reselling Kaspersky Antivirus for a year and a half. After calling the Kaspersky HQ they put me in touch with Ice Systems, Inc. which has been my distributor for approximately 8 years.”
Respondent indicates that one year after registering the domain name <kaspersky.us>, he received a call from a representative of Complainant asking about the domain name. “They asked me if I ‘was the registered owner of Kaspersky.us’ and ‘what was I using the domain for’. I told them I was the owner and that I was using it for my customers who had purchased Kaspersky and wanted an easy way to request renewals and/or retrieve their product information. ” At that time, no request was made to turn the domain over to them nor did the representative appear to be concerned about our use.”
Respondent asserts that the website for the domain is private and requires a login to access. “[I]t is not a broken link as [the] complaint suggest. It was intended for my customers use only – to better serve them. I did not register the domain in an attempt to ‘cash-in’ by squatting on it.”
Respondent further maintains that Complainant could have registered the disputed domain name before he did.
C. Additional Submissions
In its “Additional Submission,” Complainant claims that a reseller, such as Respondent, does not have the right to use the original manufacturer or supplier’s trademarks absent authorization, which was not given. Complainant points out that each of its distributors, including Ice Systems, is required to sign a Partner Agreement under which the distributor agrees not to seek trademarks or domain name registrations on any marks or names confusingly similar to Kaspersky marks or domain names. See Additional Submission, Annex 1. “Accordingly, Ice Systems is not authorized to explicitly or implicitly allow a reseller such as the Respondent to obtain domain name registrations on any of Complainant’s trademarks.”
Complainant also notes that there is no indication on the disputed site that Respondent is a reseller of Complainant’s products. “Internet users arriving at Respondent’s website can only assume that the website is officially affiliated with the Complainant, due to the confusing similarity of the disputed domain name to Complainant’s KASPERSKY trademark and the lack of disclosure thereof,” Complainant declares.
As more fully developed below, the Panel finds that: (1) the disputed domain name is identical to the KASPERSKY mark and that Complainant has rights in such mark; (2) Respondent has no rights or legitimate interests in the disputed domain name; and (3) the disputed domain name was not registered and is not being used 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;
(2) the 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
The Panel concludes that the disputed domain name, <kaspersky.us>, is, for intents and purposes, identical to the mark KASPERSKY. The addition of the top-level country code “.us” is insufficient to distinguish the domain name from the mark. See Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [Barbie.us] is identical to the trademark `Barbie’, as it uses the trademark in its entirety. The only difference is the addition of the country code ‘us’ which for this purpose is insufficient to distinguish the domain name from the trademark.”)
The Panel further concludes that Complainant has rights in the KASPERSKY mark. Such rights are manifested through Complainant’s U.S. and Community trademark registrations. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
The Panel rules that Complainant has sustained its burden of establishing that Respondent has no rights or legitimate interests in the kaspersky.us domain name. While the evidence indicates that Respondent’s site is not inactive, as Complainant initially argued, that does not mean that Respondent is making a bona fide use of the domain name, within the meaning of the Policy. Given the Panel’s previous holding that the subject domain name is, for all intents and purposes, identical to Complainant’s KASPERSKY mark, it may not be held that Respondent’s use of the domain name is bona fide.[1] In addition, Respondent does not contend, nor does the evidence support the notion, that he is commonly known by the domain name in issue or that he is making a noncommercial or fair use of the name.
The record shows that Respondent was aware of Complainant before he registered the domain name; that he had been selling Kaspersky antivirus software for over a year before registering the domain name; that Respondent contacted Complainant who put him in contact with one of Complainant’s distributors, Ice Systems, who has been Respondent’s distributor for the past eight years; that Respondent was contacted by Complainant about one year after registering the domain name; that during such conversation, Respondent informed Complainant that he was using the domain name for his customers who had purchased Kaspersky software and wanted to obtain renewals and/or retrieve their product information; and that Complainant did not at that time request transfer of the domain name or express concern over the use of the domain name.
In its Complaint, Complainant relied primarily on what it asserted was Respondent’s passive use of the domain name to support its assertion of bad faith registration and use. However, the evidence clearly indicates that such name is being used with an active site. Complainant, in its Additional Submission, in an effort to establish the requisite bad faith, appears to place primary reliance on the contention that internet users, upon arriving at Respondent’s website, will believe such site is officially affiliated with Complainant, due to the confusing similarity of the domain name to the KASPERSKY mark and the lack of disclosure on such site that Respondent is a reseller of Complainant’s products. Thus, Complainant appears to be relying on paragraph 4(b)(iv) of the Policy to establish bad faith registration and use.
However, paragraph 4(b)(iv) of the Policy requires evidence that the Respondent “intentionally” attempted to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion. The evidence, as set forth above, does not support a determination that Respondent registered the domain name with the intent to be a cybersquatter or to unfairly trade on Complainant’s goodwill. See Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder, D2002-0936 (WIPO Dec. 16, 2002). As noted in the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, “Except in cases involving ‘abusive registrations’ made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts … and calls for registrars not to disturb a registration until those courts decide.”
The unrebutted evidence suggests that Complainant was clearly on notice of Respondent’s business plan and of Respondent’s use of the disputed domain name for a website devoted, in part, to the resale of Complainant’s products and did not, at least initially, appear to be concerned about such use. Over six years have now gone by and, while laches is not a defense to an ICANN dispute, such delay is relevant in applying the Policy.
While Complainant required its distributors, including Ice Systems, to agree not to use confusingly similar marks or domain names, Respondent is not a distributor and, thus, would not appear to be bound by Complainant’s Partner Agreement. As noted above, the evidence suggests that Complainant was aware of Respondent’s business as a reseller of KASPERSKY anti-virus software before the disputed domain name was registered. And yet there is no evidence that Respondent was put on notice by Complainant that it was bound by the terms of the Partner Agreement or that Respondent was even aware of the terms of such Agreement.
There also is no evidence that Respondent sought to resell the disputed domain name to Complainant, which is a characteristic of many, if not most, cybersquatters.
The applicable Policy requires proof of bad faith registration and use. Based on the record presented, the Panel finds that Complainant has not sustained its burden of proof on this element of the Policy.
Having failed to establish all three elements required under the usTLD Policy, the Panel concludes that relief shall be DENIED
Jeffrey M. Samuels, Panelist
Dated: February 1, 2011
[1] In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel held that the use of a manufacturer’s trademark as a domain name by a dealer or reseller (an authorized dealer in that case) should be regarded as a bona fide offering of goods or services, within the meaning of paragraph 4(c)(iii) of the Policy, if certain conditions were met. One of such conditions is that the disputed site must accurately disclose the respondent’s relationship with the trademark owner. Such condition is not satisfied in this case.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page