Bitdefender IPR Management LTD v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1606001678471
Complainant is Bitdefender IPR Management LTD (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bitdefendr.com>, <bitdeffender.com>, <bitdefnder.com>, and <bitdfender.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2016; the Forum received payment on June 7, 2016.
On June 9, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <bitdefendr.com>, <bitdeffender.com>, <bitdefnder.com>, and <bitdfender.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2016 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@bitdefendr.com, postmaster@bitdeffender.com, postmaster@bitdefnder.com, postmaster@bitdfender.com. Also on June 13, 2016, 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 July 14, 2016, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant uses the BITDEFENDER mark in connection with its broad range of IT security products and services for both consumers and enterprise markets in over 150 countries worldwide.
2. Complainant holds a registration for the BITDEFENDER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,927,133, registered February 22, 2005), which establishes Complainant’s rights in its mark. See Compl., at Attached Ex. E.
3. Respondent’s domains are confusingly similar to Complainant’s BITDEFENDER mark; the domains are typosquatted versions of the mark, containing either the addition of one extra letter, or the removal of one letter. The domains also include the addition of the generic top-level domain (“gTLD”) “.com.”
4. Respondent has no rights or legitimate interests in the <bitdefendr.com>, <bitdeffender.com>, <bitdefnder.com>, and <bitdfender.com> domain names. Respondent is not commonly known by the domains, and Complainant has not given Respondent permission to use the BITDEFENDER mark. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the domains. Rather, the domains resolve to websites containing hyperlinks that redirect Internet users to Complainant’s competitors. See Compl., at Attached Ex. H (“Bitdefender Antivirus” “Virus Scanner,” “Security Tool”). What is more, Respondent has failed to respond to Complainant’s cease and desist letter, which informed Respondent that it was infringing on Complainant’s rights and allowed Respondent the opportunity to respond if it had any rights. See Compl., at Attached Ex. L.
5. Respondent has registered and is using the disputed domain names in bad faith. First, Respondent has listed the disputed domain names for sale to the general public. See Compl., at Attached Ex. I. Second, Respondent’s registration and use of the domain names serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. See Compl., at Attached Ex. H. Third, Respondent has attempted to attract Internet users to its sites for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the websites according to Policy ¶ 4(b)(iv). Fourth, Respondent is engaged in the practice of typosquatting. Fifth, Respondent used falsified and/or incomplete WHOIS contact information when it registered the domains.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Cypriot company engaged in the provision of a broad range of IT security products and services for both consumers and enterprise markets in over 150 countries worldwide.
2. Complainant is the registered owner of the BITDEFENDER mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,927,133, registered February 22, 2005), which establishes Complainant’s rights in its mark.
3. The <bitdefendr.com> domain name was registered on May 7, 2006, the <bitdeffender.com> domain was registered on August 1, 2005, the <bitdefnder.com> domain was registered on March 15, 2005, and the <bitdfender.com> domain was registered on August 8, 2005.
4. The disputed domain names resolve to websites containing hyperlinks that redirect Internet users to Complainant’s competitors.
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(f), 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 (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 issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the BITDEFENDER mark in connection with its broad range of IT security products and services for both consumers and enterprise markets in over 150 countries worldwide. Complainant has registered the BITDEFENDER mark with the USPTO (Reg. No. 2,927,133, registered February 22, 2005), and argues that its USPTO registration establishes its rights in its BITDEFENDER mark. See Compl., at Attached Ex. E. Panels have held that a registration with the USPTO establishes a complainant’s rights in its mark under Policy ¶ 4(a)(i), despite the respondent not operating in the United States. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BITDEFENDER mark. Complainant submits that Respondent’s domain names are confusingly similar to Complainant’s BITDEFENDER mark. According to Complainant’s submission, the domain names are typosquatted versions of the mark, containing either the addition of one extra letter, or the removal of one letter. The domain names also include the addition of the gTLD “.com.” Panels have held that neither the addition of a letter to a trademark to form a domain name nor the removal of a letter from the trademark to form the domain name serves to differentiate a respondent’s domain name adequately from a complainant’s mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Panels have also held that the affixation of the “.com” gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Thus, the Panel holds that Respondent’s domain names are confusingly similar to the BITDEFENDER mark under 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 names 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 (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 (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 BITDEFENDER mark and to use it in its domain names, making only minor spelling alterations;
(b) Respondent registered the <bitdefendr.com> domain name on May 7, 2006, the <bitdeffender.com> domain name on August 1, 2005, the <bitdefnder.com> domain name on March 15, 2005, and the <bitdfender.com> domain name on August 8, 2005;
(c) The disputed domain names resolve to websites containing hyperlinks that redirect Internet users to Complainant’s competitors;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant submits that Respondent is not commonly known by the domain names. The Panel notes that the WHOIS information regarding the domain names lists “Domain Admin” as registrant. Complainant also submits that it has not given Respondent permission to use its BITDEFENDER mark. The Panel also notes that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel agrees there is no basis to find Respondent commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”);
(f) Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the domain names. Rather, Complainant contends that the domain names resolve to websites containing hyperlinks that redirect to Complainant’s competitors and the Panel so finds. See Compl., at Attached Ex. H. The link titles include “Bitdefender Antivirus,” “Virus Scanner,” and “Security Tool.” See id. Complainant contends that Respondent receives pay-per-click revenue in connection with the links. Panels have found that a respondent’s use of a domain name to operate a pay-per-click website containing links to the goods of a complainant’s competitors does not constitute a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Therefore, the Panel finds that Respondent’s use of the disputed domain names constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant also contends that Respondent has failed to respond to Complainant’s cease and desist letter, which informed Respondent that it was infringing on Complainant’s rights and allowed Respondent the opportunity to respond if it had any rights. See Compl., at Attached Ex. L. Panels have decided that a respondent’s failure to respond to a complainant’s demand letter indicates that a respondent lacks rights and legitimate interests in a disputed domain name. See The Great Eastern Life Assurance Company Ltd. v. Unasi Inc., D2005-1218 (WIPO Jan. 26, 2006) (stating, “Panel finds that the Respondent’s failure to counter the allegations of the cease and desist letter amounts to adoptive admission of the allegations,” and finding no rights or legitimate interests as the prima facie burden shifted to the respondent, who did not submit a response and therefore failed under Policy ¶ 4(a)(ii)). For this reason, the Panel holds that Respondent lacks rights and legitimate interests in the domain names.
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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has listed the domain names for sale to the general public. See Compl., at Attached Ex. I. Panels have agreed that offers for sale to the general public constitute evidence of bad faith under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Therefore, the Panel agrees that Respondent registered and is using the domain names in bad faith per Policy ¶ 4(b)(i).
Secondly, Complainant contends that Respondent’s registration and use of the domain names serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. See Compl., at Attached Ex. H. Panels have found a respondent’s diversion of Internet users to competitors via hyperlinks related to a complainant’s legitimate business to constitute bad faith under Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent’s registration and use of the domain names constitute bad faith disruption under Policy ¶ 4(b)(iii).
Thirdly, Complainant argues that Respondent has attempted to attract Internet users to its sites for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the websites. Complainant contends that Respondent registered the domain names to create a likelihood of confusion with Complainant and Complainant’s mark in order to profit from users looking for Complainant’s website. The Panel agrees with Complainant’s contentions and holds that Internet user confusion that results in the redirection to Respondent’s sites with links to the goods of Complainant’s competitors constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Fourthly, Complainant contends that Respondent has engaged in typosquatting. Panels have found that respondents who take advantage of common typing errors engage in bad faith under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (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). Accordingly, the Panel finds that Respondent’s typosquatting conduct is additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Fifthly, Complainant argues that Respondent used falsified and/or incomplete WHOIS contact information when it registered the domain names. Complainant directs the Panel to its Attached Exhibit I, which includes the WHOIS information for the domains. Although Complainant does not provide additional information to support its contention, panels have decided that a respondent’s use of falsified and/or incomplete WHOIS information demonstrates the respondent’s bad faith per Policy ¶ 4(a)(iii). See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith). As the Panel agrees with Complainant’s argument, it finds that Respondent registered and is using the domain names in bad faith per Policy ¶ 4(a)(iii).
Finally, 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 names using the BITDEFENDER mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them 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 <bitdefendr.com>, <bitdeffender.com>, <bitdefnder.com>, and <bitdfender.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 19, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page