Sophos Limited v. N/a c/o Victor Ignatyev
Claim Number: FA1504001615016
Complainant is Sophos Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is N/a c/o Victor Ignatyev (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwsophos.com>, registered with NICREG LLC.
The undersigned 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 17, 2015; the Forum received payment on April 17, 2015.
On April 21, 2015, NICREG LLC confirmed by e-mail to the Forum that the <wwwsophos.com> domain name is registered with NICREG LLC and that Respondent is the current registrant of the name. NICREG LLC has verified that Respondent is bound by the NICREG LLC 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 April 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 2015 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@wwwsophos.com. Also on April 23, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 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 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 made the following contentions.
1. Policy ¶ 4(a)(i)
a. Complainant has rights in the SOPHOS mark through its registration with the United Kingdom Intellectual Property Office (“UKIPO”) (UK Reg. No. 1,557,395, registered on July 14 1995). See Compl., at attached Exhibit 1.
c. Respondent’s <wwwsophos.com> domain name is confusingly similar to Complainant’s SOPHOS mark, because it fully incorporates Complainant’s SOPHOS mark and adds the common “www” abbreviation.
2. Policy ¶ 4(a)(ii)
a. The WHOIS information for the disputed domain name lists “NICREG LLC” as Registrant. Respondent has not submitted any further evidence to indicate it is commonly known by the disputed domain name. Further, Respondent is neither licensed nor authorized to use Complainant’s mark.
b. Respondent registered the disputed domain name to confuse internet users for commercial profit by providing links to competitors of Complainant.
c. Respondent previously offered the disputed domain name up for sale, which further demonstrates its lack of rights and legitimate interests in the disputed domain name.
3. Policy ¶ 4(a)(iii)
a. Respondent acquired the domain name primarily for the purpose of selling it to Complainant or a competitor of Complainant in excess of out-of-pocket costs.
b. Respondent has a history of UDRP cases decided against it, displaying a pattern of cybersquatting and typosquatting.
c. Respondent uses the disputed domain to attract Internet users and commercially profit from their confusion as to Complainant’s affiliation with Respondent’s resolving website.
d. Respondent’s registration of the <wwwsophos.com> domain name constitutes typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United Kingdom company engaged in the business of a
developer and vendor of security software and hardware.
2. Complainant has rights in the SOPHOS mark through its registration with the
United Kingdom Intellectual Property Office (“UKIPO”) (UK Reg. No. 1,557,395, registered on July 14 1995).
3. The <wwwsophos.com> domain name was created on February 12, 2008.
4. Respondent uses the disputed domain to attract Internet users and
commercially profit from their confusion as to Complainant’s affiliation with Respondent’s resolving website by providing links to competitors of 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant uses the SOPHOS mark in connection with its business as a developer and vendor of security software and hardware. Complainant submits that it has rights in the SOPHOS mark through its registration with the UKIPO (UK Reg. No. 1,557,395 registered on July 14 1995). Complainant provides documentation of this registration in Annexure 1 to the Complaint. Past Panels have found that registration of a mark with the UKIPO is sufficient to establish rights in a mark. See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). Past Panels have also found that a Complainant does not need to establish rights in the country in which a Respondent operates, so long as Complainant has established rights in a mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that the UKIPO registration establishes Complainant’s rights in the SOPHOS mark, even though Respondent reportedly resides in Russia.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SOPHOS mark. Complainant submits that Respondent’s <wwwsophos.com> domain name is confusingly similar to Complainant’s SOPHOS mark pursuant to Policy ¶ 4(a)(i), on the basis that the only differences are the inclusion of the top level domain name ‘.com,’ and the addition of the common abbreviation ‘www’ preceding the mark. Past Panels have found that the addition of ‘.com’ does not distinguish a disputed domain name from a mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark”). Past Panels have also found that the letters ‘www’ preceding a mark do not distinguish a disputed domain name from a mark. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar). Accordingly, the Panel finds that the <wwwsophos.com> domain name is confusingly similar to Complainant’s SOPHOS mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SOPHOS
trademark and to use it in its domain name adding only the common abbreviation ‘www’ preceding the mark;
(b) Respondent uses the disputed domain to attract Internet users and
commercially profit from their confusion as to Complainant’s affiliation with Respondent’s resolving website by providing links to competitors of Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant alleges that Respondent has no rights or legitimate interests in the <wwwsophos.com> domain name on the basis that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information indicates that “NICREG LLC” is the Registrant of the disputed domain name. Complainant points out that it was notified by email that Respondent, “Victor Ignatyev” is actually the registrant of the disputed domain name. The Panel notes that Respondent has failed to submit a Response to refute any of Complainant’s contentions. In light of the available evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e)Complainant alleges that Respondent is not using the disputed domain name to provide a bona fide offering of goods and services, or a legitimate noncommercial or fair use. Complainant urges that Respondent is using the <wwwsophos.com> domain name for the purpose of confusing Internet users for commercial profit by providing links to competitors of Complainant. The Panel notes that Respondent has included links to online security, antivirus and firewall products and/or services that compete with Complainant’s products and services. See Compl., at attached Exhibit 11. Past Panels have found that such use of a domain name does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). As the Panel finds such use of the disputed domain name, it finds that Respondent does not offer a bona fide offering of goods and services, or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii);
(f)Complainant notes that Respondent has placed a general offer of sale of the disputed domain name on the resolving webpage. The Panel notes Complainant’s Exhibit 11, which supports this contention. Generally, offers of sale of disputed domain names have been treated by panels as signs of a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). Thus, the Panel finds that Respondent’s general offer to sell the disputed domain name is further evidence of Respondent’s lack or rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent acquired the domain name primarily for the purpose of selling it to Complainant or a competitor of Complainant and that Respondent is attempting to sell the disputed domain in excess of out-of pocket expense. Complainant has provided evidence of Respondent’s intent to sell, as well as the asking price of $500 in Annexure 11. Complainant urges that the average cost of a ‘.com’ domain name is $10. As the Panel finds that Respondent is attempting to sell the disputed domain name at a cost above out-of-pocket expense, the Panel finds that the disputed domain name was registered in bad faith pursuant to Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Secondly, Complainant alleges that Respondent has a history of UDRP cases decided against it. Complainant has provided evidence of these prior decisions in Annexure 13. Previous panels have looked to prior adverse UDRP decisions against a respondent as evidence of a pattern of bad faith according to Policy ¶ 4(b)(ii). As the Panel finds this evidence provided by Complainant sufficient to establish a pattern, the Panel finds that Respondent acted in bad faith under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Thirdly, Complainant alleges that Respondent uses the disputed domain name to attract Internet users and commercially profit from their confusion as to Complainant’s affiliation with Respondent’s resolving website. Complainant urges that the resolving website includes sponsored links and advertising for competitors of Complainant. Complainant offers Annexure 11 as evidence of this use. As the Panel agrees with Complainant’s contention, the Panel finds that Respondent uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Fourthly, Complainant alleges that Respondent’s registration of the <wwwsophos.com> domain name constitutes typosquatting, on the basis that the disputed domain name contains the entirety of the SOPHOS mark, and is differentiated only by the proceeding ‘www’ and terminating ‘.com.’ The Panel notes that “www” is a typical abbreviation for “World Wide Web”, and is typically typed before a domain name. As the Panel finds that Respondent’s registration of the disputed domain name constitutes typosquatting, the Panel finds that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). SeeInternet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark”).
In addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SOPHOS mark and its use of the domain name since its registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwsophos.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 23, 2015
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