McAfee, Inc. v. Tip Powers / Reitster, Inc
Claim Number: FA1410001586321
Complainant is McAfee, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Tip Powers / Reitster, Inc (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcfaee.com>, registered with Bigrock Solutions Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2014; the National Arbitration Forum received payment on October 22, 2014.
On October 23, 2014, Bigrock Solutions Ltd. confirmed by e-mail to the National Arbitration Forum that the <mcfaee.com> domain name is registered with Bigrock Solutions Ltd. and that Respondent is the current registrant of the name. Bigrock Solutions Ltd. has verified that Respondent is bound by the Bigrock Solutions Ltd. 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 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 2014 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@mcfaee.com. Also on November 6, 2014, 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 December 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the MCAFEE mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,818,780, registered Feb. 1, 1994). Complainant uses the mark in connection with computer programs, namely utility programs and anti-virus programs. The <mcfaee.com> domain name is confusingly similar to the MCAFEE mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor does Respondent have permission to use the mark. Respondent is using the mark in connection with a website hosting third-party links in competition with Complainant.
Respondent has engaged in bad faith use and registration. Respondent uses the disputed domain name to promote goods and services in competition with Complainant, which disrupts Complainant’s business. Further, the disputed domain name resolves to promote commercial hyperlinks, from which Respondent impermissibly generates profit via likelihood of confusion. Respondent’s registration of the <mcfaee.com> domain name is indicative of typosquatting, which has been deemed evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, McAfee, Inc., has registered the MCAFEE mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,818,780, registered Feb. 1, 1994). Complainant uses the mark in connection with computer programs, namely utility programs and anti-virus programs.
Respondent, Tip Powers / Reitster, Inc, registered the <mcfaee.com>, domain name on December 29, 2001. Respondent is using the MCAFEE mark in connection with a website hosting third-party links in competition with Complainant.
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 has rights in the MCAFEE mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The <mcfaee.com> domain name is confusingly similar to the MCAFEE mark under Policy ¶ 4(a)(i). The disputed domain name transposes the “a” and “f” in the mark, while adding the generic top-level domain (“gTLD”) “.com.” See 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); 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).
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).
Respondent is not commonly known by the <mcfaee.com> domain name under Policy ¶ 4(c)(ii). Respondent does not have permission to use the MCAFEE mark. The WHOIS information identifies “Tip Powers” of “Reitster, Inc” as the registrant of record. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent is using the mark in connection with a website that hosts third-party links in competition with Complainant. The resolving website includes links in competition with Complainant’s anti-virus offerings, such as “GFI Business Antivirus,” “Free Norton AV Protection,” and “2014 Best PC Antivirus.” Respondent’s use of the <mcfaee.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent’s use of the <mcfaee.com> domain name to promote goods and services in competition with Complainant disrupts Complainant’s business. Therefore, Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The disputed domain name resolves to promote commercial hyperlinks from which Respondent presumably generates profit through likelihood of confusion. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (Respondent’s use of the disputed domain name to operate a website featuring links to competing and non-competing commercial websites from which Respondent presumably receives referral fees is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).” Respondent’s use of the <mcfaee.com> domain name to promote click-through links relating to anti-virus programs in competition with Complainant is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent’s registration of the <mcfaee.com> domain name is typosquatting which is evidence of bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“’Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcfaee.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 19, 2014
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