Lavasoft AB v. Bullet-Proof Software
Claim Number: FA0510000570134
PARTIES
Complainant is Lavasoft AB
(“Complainant”), represented by Louis J.
Levy, of Leventhal Senter &
Lerman PLLC, 2000 K Street NW,
Suite 600, Washington, DC 20006.
Respondent is Bullet-Proof
Software (“Respondent”), 15111 N.
Hayden Rd., Ste 160, PMB 353, 101 Scadding Street, Taunton, MA 02780.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adaware.us>,
registered with Go Daddy Software, Inc.
PANEL
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.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on September 30, 2005; the Forum received a hard
copy of the Complaint on October 3, 2005.
On October 4, 2005, Go Daddy Software, Inc. confirmed by e-mail to the
Forum that the domain name <adaware.us>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the U. S. Department of
Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 7, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 7, 2005 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”).
Having received no Response from Respondent, using the same contact
details and methods as were used for the Commencement Notification, the Forum
transmitted to the parties a Notification of Respondent Default.
On November 2, 2005, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Louis E. Condon
as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <adaware.us> domain name is confusingly similar to Complainant’s AD-AWARE mark.
2. Respondent does not have any rights or legitimate interests in the <adaware.us> domain name.
3. Respondent registered or used the <adaware.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Lavasoft AB, sells a computer
software program called “Ad-Aware.”
This program is a utility designed to detect and remove “spyware” and
other unwanted computer programs from computer hard drives. Complainant’s mission is to is to protect
the privacy of computer users and safeguard the security of their computers.
Complainant has submitted a U.S. Patent and
Trademark Office (“USPTO”) registration, as well as various international
registrations, to establish its rights in the AD-AWARE mark (Reg. No.
2,954,155, registered on January 28, 2003).
Respondent registered the <adaware.us> domain name on September 10, 2003. Respondent is using the disputed domain name to market its Trackzapper line of software, including TZ Shredder, TZ SystemCleanser for Windows, TZ Anti Spam Filter, TZ Popup Killer & Ads Filter, TZ Firewall, and Privacy Guard.
Complainant sent a cease-and-desist letter to
Respondent on August 5, 2005.
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or 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.
Complainant has established rights in the
AD-AWARE mark as evidenced by its USPTO and various international trademark
registrations. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
UDRP does not require that the mark be registered in the country in which the
respondent operates; therefore it is sufficient that the complainant can
demonstrate a mark in some jurisdiction).
Respondent’s <adaware.us>
domain name is confusingly similar to the AD-AWARE mark. The only difference is the elimination of
the hyphen and the addition of the “.us” top-level domain, which does not
significantly distinguish the domain name from the mark. See Nat’l
Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark spelling,
C-SPAN, is confusingly similar to the complainant's mark); see also Tropar
Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that
since the addition of the country-code “.us” fails to add any distinguishing characteristic
to the domain name, the <tropar.us> domain name is identical to the
complainant’s TROPAR mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent is wholly appropriating Complainant’s
mark to sell its competing software.
The Panel finds that appropriating another’s trademark to sell competing
goods is not a bona fide offering of a good or service pursuant
to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iv). See Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see also Gallup, Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent
is not known by the mark).
Respondent is not a licensee of Complainant,
nor does Respondent have a trademark registration for ADAWARE . There is no evidence in the record,
including the WHOIS registration information, which indicates that Respondent
is commonly known by the disputed domain name.
Therefore, the Panel finds that Respondent does not have rights or
legitimate interests pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent is
appropriating Complainant’s mark to sell competing software. The Panel finds that Respondent is using
Complainant’s mark to compete with Complainant, which is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Gen. Media
Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001)
(finding bad faith where a competitor of the complainant registered and used a
domain name confusingly similar to the complainant’s PENTHOUSE mark to host a
pornographic web site); see also Lubbock
Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23,
2000) (concluding that domain names were registered and used in bad faith where
the respondent and the complainant were in the same line of business in the
same market area).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is
Ordered that the <adaware.us> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 16, 2005
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