MCAFEE, INC. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1206001447283
Complainant is MCAFEE, INC. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mcafec.com>, <mccafee.com>, and <mxafee.com>, registered with Internet.Bs Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2012; the National Arbitration Forum received payment on June 5, 2012.
On June 12, 2012, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 June 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2012 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@mcafec.com, postmaster@mccafee.com, and and postmaster@mxafee.com. Also on June 19, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mcafec.com>, <mccafee.com> and <mxafee.com> domain names are confusingly similar to Complainant’s MCAFEE mark.
2. Respondent does not have any rights or legitimate interests in the <mcafec.com>, <mccafee.com> and <mxafee.com> domain names.
3. Respondent registered or used the <mcafec.com>, <mccafee.com> and <mxafee.com> domain names 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."
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(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.”).
Complainant alleges that it is the owner of USPTO trademark registrations for the MCAFEE mark (e.g., Reg. No. 1,818,780 registered February 1, 1994). Complainant asserts that it uses its mark to brand its computer software products, particularly utility and anti-virus programs. Complainant contends that it has rights in the MCAFEE mark by virtue of its federal trademark registrations. Panels have found that registration of a mark is sufficient for a finding of rights. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Panels have found where the respondent is located in relation to the country where the mark is registered irrelevant. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). As such, the Panel finds that Complainant has rights in the MCAFEE mark under Policy ¶ 4(a)(i).
Complainant next asserts that Respondent’s <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names are confusingly similar to the MCAFEE mark. Complainant argues that each of the disputed domain names includes Complainant’s mark with one or more of the following changes: the addition of a generic top-level domain (“gTLD”), the deletion of one letter, and/or the addition of one letter. The Panel finds that the addition of a gTLD makes no substantial change to a mark and therefore does not have an impact on a Policy ¶ 4(a)(i) decision. 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). The Panel also finds that the addition and/or deletion of a single letter does not negate a finding of confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel therefore finds that Respondent’s <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names are confusingly similar to the MCAFEE mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names. Complainant makes this argument on the basis that the WHOIS records for the disputed domain names list “Fundacion Private Whois / Domain Administrator” as the domain name registrant. Panels such as those in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), held that the WHOIS record is often illustrative of whether a respondent is commonly known by a disputed domain name. The Panel finds that the WHOIS record for the <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names does not suggest that any portion of the public may associate the <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names with Respondent. The Panel holds that Respondent is not commonly known by the <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names pursuant to Policy ¶ 4(c)(ii).
Next, Complainant asserts that Respondent has been using the <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names in a way which does not give the Respondent rights or legitimate interests. Complainant states, and provides evidence in Exhibit H, that the <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names resolve to website that display links to Complainant’s website and to third-party websites offering goods and services that compete with those that Complainant provides under the MCAFEE mark. Therefore, the Panel finds that Respondent’s use of the <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
Complainant contends that Respondent has developed a pattern of registering infringing domain names in bad faith. Complainant claims that Respondent has been party to several previous UDRP disputes where the panels ordered the transfer of the respective domain names. See Xcentric Ventures, LLC v. Fundacion Private Whois / Domain Adm’r, FA 1441027 (Nat. Arb. Forum June 7, 2012); see also Thomson Reuters v. Fundacion Private Whois / Domain Adm’r, FA 1439297 (Nat. Arb. Forum May 24, 2012); see also Chevron Intellectual Prop. LLC v. Fundacion Private Whois / Domain Adm’r, FA 1438289 (Nat. Arb. Forum May 16, 2012). Panels have found that, where a respondent has been subject to multiple UDRP disputes where it lost the domain names, there is an inference of bad faith in the current case given the development of a pattern of bad faith. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). Given Respondent’s registration of confusingly similar domain names in the present dispute and several previous instances of panel-ordered transfers of domain names, the Panel finds that Respondent’s pattern of bad faith indicates bad faith with regard to the registration and use of the <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names pursuant to Policy ¶ 4(b)(ii).
Complainant next asserts that Respondent’s bad faith is evident from its attempt to take commercial advantage of Internet users’ mistakes regarding the source of the <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names. Complainant argues that, by using the MCAFEE mark in the disputed domain names and the displaying of links to Complainant and its competitors, Respondent is attempting to achieve a wrongful competitive advantage so that it can commercially gain. The Panel finds that Respondent registered and is using the <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv) as it finds that Respondent purposefully uses Complainant’s mark to commercially gain by causing confusion. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Finally, Complainant contends that Respondent has engaged in typosquatting. According to Complainant, Respondent has taken the MCAFEE mark and merely added and/or deleted a single letter in the substantive part of the disputed domain names. Panels have found that typosquatting is clear evidence of bad faith as it causes Internet users who are seeking a complainant to inadvertently arrive at the respondent’s website. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). Therefore, the Panel finds that Respondent registered and is using the <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii), and finds that Respondent typosquatted the MCAFEE mark in each of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcafec.com>, <mccafee.com>, and <mxafee.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 24, 2012
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