McAfee, Inc. v. system net development llc
Claim Number: FA1302001483799
Complainant is McAfee, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is system net development llc (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwmcafee.com>, registered with DNC HOLDINGS, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on February 6, 2013; the National Arbitration Forum received payment on February 6, 2013.
On February 6, 2013, DNC HOLDINGS, INC. confirmed by e-mail to the National Arbitration Forum that the <wwwmcafee.com> domain name is registered with DNC HOLDINGS, INC. and that Respondent is the current registrant of the name. DNC HOLDINGS, INC. has verified that Respondent is bound by the DNC HOLDINGS, 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 February 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wwwmcafee.com. Also on February 6, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 March 11, 2013, pursuant to Complainant's request to have the dispute de-cided 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 Not-ices, 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 is the world’s largest Internet security technology company.
Complainant has rights in the MCAFEE trademark by way of its registrations of the mark with the United States Patent and Trademark Office (“USPTO”), in-cluding Reg. No. 1,818,780, registered on February 1, 1994.
The <wwwmcafee.com> domain name was registered on August 14, 2000.
Respondent’s <wwwmcafee.com> domain name is confusingly similar to the MCAFEE mark.
Respondent has not been commonly known by the contested domain name <wwwmcafee.com>.
Complainant has not endorsed, supported or approved of Respondent’s incorp-oration of the MCAFEE mark in its domain name.
Respondent uses the <wwwmcafee.com> domain name to shuttle Internet users to a website featuring generic hyperlinks to an array of websites competing with the business of Complainant.
Respondent presumably receives income from the operation of the website re-solving from the domain name by way of hyperlink advertising revenue each time an Internet user mistakenly clicks on its featured links.
Respondent lacks rights to and legitimate interests in the domain name.
Respondent’s registration of the <wwwmcafee.com> domain name is evidence of typo-squatting.
Respondent uses the disputed domain name to disrupt Complainant’s business.
Respondent’s use of the domain name deceives Internet users, who are likely to confuse Complainant as the source or owner of this domain name.
Respondent both registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal 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 reason-able inferences of fact in the allegations of a UDRP 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 trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a UDRP complainant’s trademark registrations with the US-PTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in those marks pursuant to Policy ¶ 4(a)(i)).
Turning then to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <wwwmcafee.com> domain name is con-fusingly similar to the MCAFEE trademark. The domain name consists of the entire MCAFEE mark, with the addition of the generic Top Level Domain (“gTLD”) “.com,” and omission of the punctuation before the “www” that Internet users enter into a web browser when seeking Complainant’s website. These alterations of the mark, made in creating the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the mark of another).
Likewise, the addition of “www” to a mark enhances the confusing similarity be-tween a domain name and the mark from which it was derived because such an addition is ordinarily intended to exploit an Internet user’s mistake in forgetting to add a period between the “www” and the intended Internet destination. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding a respondent’s domain name <wwwbankofamerica.com> confusingly similar to a UDRP complainant’s BANK OF AMERICA trademark because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this branch of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain names. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both finding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the <wwwmcafee.com> domain name, and that Complainant has not approved of Respondent’s incorp-oration of the MCAFEE trademark in its domain name. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “system net development LLC,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the domain name <wwwmcafee.com> so as to have acquired rights to or legitimate interests in it within the contemplation of 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 disputed domain names, and so failed to show that it had rights to or legitimate interests in them as described in Policy ¶ 4(c)(ii), where the relevant WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electro-matic Equip't” as the registrant, and there was no other evidence in the record to suggest that that respondent was commonly known by the domain names).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <wwwmcafee.com> domain name, in that Respondent employs the domain name to shuttle Internet users to a website featuring hyperlinks to an array of websites competing with the business of com-plainant, and that Respondent presumably obtains revenue through this process. This use of the domain name 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website resolving from a domain name that is confusingly similar to the mark of another was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncom-mercial or fair use under Policy ¶ 4(c)(iii)).
We further note that Respondent’s registration of the <wwwmcafee.com> domain name is evidence of typo-squatting, that is, the creation of a domain name which is a common misspelling of the mark of another in order to take advantage of the mistakes made by Internet users in entering that mark in a web browser. Typo-squatting is evidence that Respondent has no rights to or legitimate interests in the contested domain name. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests under Policy ¶ 4(a)(ii) where a respondent used the <wwwdewalt.com> domain name to divert Internet users to a search engine webpage).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent’s use of the contested <wwwmcafee.com> domain name in the manner alleged in the Complaint dis-rupts Complainant’s business. This demonstrates bad faith in the registration and use of the domain name within the meaning of ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008):
The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).
We are also convinced that Respondent uses the disputed <wwwmcafee.com> domain name to lead Internet users to believe that Complainant is the source or owner of the domain name, and that Respondent likely profits from this confusion by receiving advertising revenue each time an Internet user mistakenly clicks on one of the hyperlinks on the domain name’s resolving website. This stands as evidence that respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv). See Associated News-papers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … use of the … domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
Finally, we have already concluded that Respondent practiced typo-squatting in creating the <wwwmcafee.com> domain name from Complainant’s MCAFEE trademark. Typo-squatting is independent evidence of bad faith registration of the domain name. See, for example, Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):
Typosquatting … is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typo-squatting is inherently parasitic and of itself evidence of bad faith.
The Panel thus finds that Complainant has met its obligations of proof under 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, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <wwwmcafee.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 21, 2013
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