YDF Global Pty Ltd v. vSpace Tech / RFC Trading cc
Claim Number: FA1810001810141
Complainant is YDF Global Pty Ltd (“Complainant”), represented by Marcelle Webster of TCS Solicitors Pty Ltd., Australia. Respondent is vSpace Tech / RFC Trading cc (“Respondent”), represented by Barrie Marais of TownsWilson Lawyers, Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cryptoloc.com>, registered with Porkbun LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 2, 2018; the Forum received payment on October 2, 2018.
On October 3, 2018, Porkbun LLC confirmed by e-mail to the Forum that the <cryptoloc.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 October 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 2018 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@cryptoloc.com. Also on October 8, 2018, 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.
A timely Response was received and determined to be complete on October 29, 2018.
On November 12, 2018, Complainant filed an unsolicited additional submission which, according to Supplemental Rule 7(a), should have been submitted no later than November 3, 2018. The Rules do not contemplate additional submissions unless requested by the Panel under Rule 12. In the exercise of its discretion under the Rules, paragraphs 10(a) and (b), the Panel will not consider Complainant’s untimely unsolicited additional submission. The Panel follows the reasoning set out in CyBerCorp Holdings, Inc. v. Jay Allman, FA244090 (Forum May 14, 2004) (“Here, excluding Complainant’s untimely optional supplemental submission does not offend due process. Complainant had the opportunity to present its case in the Complaint. However, allowing the submission might be inequitable since Respondent might have relied on Rule 7 in considering whether or not to submit a Sur-Reply. Therefore the Panel will not consider Complainant’s additional submission.”).
On November 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Respondent’s <cryptoloc.com> domain name is confusingly similar to Complainant’s CRYPTOLOC TECHNOLOGY mark as it uses the relevant portion “Cryptoloc.”
Complainant submits Respondent has no rights or legitimate interests in the <cryptoloc.com> domain name. Respondent is not commonly known as the disputed domain name as it was a former employee for Complainant. Additionally, Respondent is not using the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name is not being used to host a website or publish any information. Respondent is also attempting to sell the disputed domain name to Complainant in excess of Respondent’s out-of-pocket costs.
Respondent registered and uses the <cryptoloc.com> domain name in bad faith. Respondent is a former employee of Complainant’s subsidiary. Complainant submits evidence of the Employment Agreement between Complainant’s subsidiary, Your Digital File (Aust) Pty Ltd and Respondent (the individual controlling Respondent) and Employment Separation Certificate. See Compl., Annexures 10 and 11. Complainant submits that Respondent became aware of Complainant’s trademark during the course of his employment with Complainant and that Respondent registered the disputed domain name primarily for the purpose of selling or otherwise transferring it to the Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs. To support its claim, Complainant provides an email with a Sales Agreement from Respondent requesting AU$38,700.00 for the disputed domain name. See Compl. Annexure 13.
B. Respondent
Respondent asserts that it is a closed corporation in South Africa and that it is an advisor and authorized service provider for “Cryptoloc”, a business registered in Australia on December 22, 2017. See Resp., Annexure 2. Respondent submits that Complainant only registered a trademark in Australia and that Complainant confuses its Australian registered trademark with an international domain name. Respondent further submits that <cryptoloc.com> domain name is not identical or confusingly similar to Complainant’s mark as Complainant’s mark consists of two terms, CRYPTOLOC TECHNOLOGY and not only the single word CRYPTOLOC. Further, Respondent asserts that the term “cryptoloc” is commonly used by various entities.
Respondent submits it has rights and legitimate interests in the <cryptoloc.com> domain name. Respondent submits that the Australian Securities & Investment Commission (ASIC) awarded the legitimate use of the business name “CryptoLoc” to Respondent’s client, CryptoLoc. Respondent submits that Respondent and its client CryptoLoc would have understood Complainant’s claim had the dispute been around a domain name close to Complainant’s mark such as <cryptoloctechnology.com> or <cyrptolog-technology.com>. Respondent claims that Respondent, on behalf of CryptoLoc, has tried to solve the situation amicably with Complainant and that Complainant has already initiated Australian based legal action, which did not gain traction.
Respondent states that it did not register or use the <cryptoloc.com> domain name in bad faith. Respondent asserts that it does not dispute having been contracted by Complainant. Respondent submits that Complainant contracted Respondent specifically due to Respondent’s past experience with distributed encrypted file replication technologies. Respondent further submits that in early June 2016, while working for Complainant, Respondent cautioned Complainant’s representative to register “cryptoloc” under multiple TLDs (and on social media platforms), “especially due to the references thereof on the Complainant’s public website”. However, Respondent states that Complainant had no interest in acquiring any domain names except <yourdigitalfile.com> and <yourdigitalfile.com.au> and that those were the only domain names Respondent administered on behalf of Complainant. Respondent submits that it registered the disputed domain name via its company, RFC Trading on June 15, 2016. Respondent’s employment with Complainant was terminated on September 25, 2016 and that on termination, Complainant did not request nor enquire on transferring the disputed domain name to Complainant. Respondent submits that on March 12, 2018, Complainant contacted Respondent regarding the business name “CryptoLoc” and the disputed domain name. On March 21, 2018, Respondent presented a draft sales agreement to Complainant for its consideration. Respondent submits that Complainant’s use of CRYPTOLOG ® is misleading, dishonest or confusing as Complainant’s mark does not consist only of the word “cryptoloc”.
PROCEDURAL ISSUE
Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings. Respondent alleges that “Complainant has already initiated Australian based legal action which did not gain traction”. In this regard, Respondent refers to demand letters sent by Complainant to Respondent. There is no evidence on record that the disputed domain name is the subject of pending legal proceedings. Therefore, the Panel will proceed to render a decision.
Complainant, YDF Global Pty Ltd, is a subsidiary of YDF Holdings Limited, a company incorporated in Australia. Other subsidiaries of YDF Holdings Limited include Digital Filing Company Pty Ltd and Your Digital File (Aust) Pty Ltd. Complainant has rights in the CRYPTOLOC TECHNOLGOY mark through its trademark registration with the Australian Trademark Office (e.g., Reg. No. 1,596,173, registered Dec. 11, 2013). See Compl. Annexure 5. Complainant owns a patent for an encryption (date security) software in connection with the CRYPTOLOC TECHNOLOGY mark.
Respondent is an entity controlled by a former employee of Complainant’s subsidiary, Your Digital File (Aust) Pty Ltd. See Resp., Annexure 1. Respondent (the individual behind the entity “vSpace Tech / RFC Trading cc”) worked as Systems Administrator for Complainant’s subsidiary between March 29, 2016 and September 26, 2016. See Compl. Annexure 10.
The disputed domain name <cryptoloc.com> was registered by Respondent on June 15, 2016. It is not resolving to an active website.
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.
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."
Taking the aforementioned provisions into consideration, this Panel decides as follows:
Policy ¶ 4(a)(i) requires the Panel to consider first whether Complainant has established relevant trademark rights. Complainant has adduced evidence of rights in the term CRYPTOLOC TECHNOLOGY, based upon its trademark registration with the Australian Trademark Office (e.g., Reg. No. 1,596,173, registered Dec. 11, 2013). See Compl. Annexure 5. Policy ¶ 4(a)(i) is a low threshold test to determine whether Complainant has standing to bring this case. The Panel therefore finds that Complainant’s registration of CRYPTOLOC TECHNOLOGY mark is sufficient to establish rights for the purposes of Policy ¶ 4(a)(i).
The Panel is also required to examine under Policy ¶ 4(a)(i) whether the disputed domain name <cryptoloc.com> is identical or confusingly similar to Complainant’s CRYPTOLOC TECHNOLOGY mark. The Panel notes that Complainant’s mark consists of two terms, CRYPTOLOC and TECHNOLOGY. The disputed domain name reproduces only the term CRYPTOLOC of Complainant’s mark and omits the term TECHNOLOGY. Prior panels have found that “omitting a word from a mark is insufficient to differentiate such mark from an at-issue domain name for the purpose of the Policy”. See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016).
It is well-established that the presence of the “.com” gTLD is generally disregarded in this analysis as it is a functional element. See David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (“Respondent arrives at the disputed domain name by simply taking Complainant’s mark in its entirety and adding the g TLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s common law trademark.”).
The Panel therefore finds that the <cryptoloc.com> domain name is confusingly similar to Complainant’s mark.
Complainant has therefore satisfied Policy ¶ 4(a)(i).
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy sets out the following non-exhaustive list of circumstances that a respondent may rely on to demonstrate rights or legitimate interests in a domain name, including but not limited to:
“(i) before any notice to [respondent] of the dispute, [respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [respondent have] acquired no trade mark or service mark rights; or
(iii) [respondent is ] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). See also Murray R. Braun v. Judd Braun, FA1809001809057 (Forum Nov. 6, 2018).
The Panel has considered the statements and evidence submitted by the Parties and finds that Complainant has made a prima facie showing of Respondent’s lack of rights to or legitimate interest in the disputed domain name and that Respondent has failed to rebut such a showing.
Complainant contends and Respondent accepts that Respondent is a former employee who registered the disputed domain name during the course of Respondent’s employment with Complainant’s subsidiary. See Compl., Annexures 10 and 11 and Resp., p.7. By Respondent’s own admission, Respondent advised Complainant’s representative in early June 2016 “on the availability of registering ‘cryptoloc’ on some of the TLDs. Especially due to the references thereof on the Complainant’s public website”. See Resp, p. 8. The Panel finds that Respondent’s former employment with Complainant indicates Respondent’s lack of rights and legitimate interests in the disputed domain name. See Murray R. Braun v. Judd Braun, FA1809001809057 (Forum Nov. 6, 2018).
Furthermore, Respondent continues to maintain control of the disputed domain name even after leaving his employment and has requested payment of AU$38,700.00 from Complainant for the transfer of the disputed domain name to Complainant. See Compl. Annexure 13. The Panel is of the view that Respondent’s offer to sell the <cryptoloc.com> domain name cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, in accordance with Policy ¶¶ 4(c)(i) or (iii), as Respondent’s registration of the disputed domain name is in itself illegitimate. The Panel therefore finds Respondent’s efforts to profit from the sale of the disputed domain name indicative of Respondent’s lack of rights and legitimate interests in the disputed domain name, in accordance with Policy ¶ 4(a)(ii).
There is no evidence either on record that Respondent is commonly known by the <cryptoloc.com> domain name, under Policy ¶ 4(c)(ii). In this regard, the WhoIs information of record identifies the registrant of the disputed domain name as “vSpace Tech / RFC Trading cc,” and there is no evidence indicating that Respondent was authorized to register a domain name incorporating Complainant’s mark.
Respondent appears to rely on the business name “Cryptoloc” to claim rights or legitimate interests in the disputed domain name. The Panel notes that the Australian Business Name (ABN) “CryptoLoc” was created well after the disputed domain name was registered (i.e. on December 22, 2017). See Resp., Annexure 2. Furthermore, it is clear that Respondent is behind the creation of this business as the address appearing on the ABN record for “CryptoLoc” is the same address appearing on the employment contract between Respondent and Complainant’s subsidiary. See Resp., Annexure 2 and Compl., Annexure 10. The Panel is therefore of the view that Respondent registered the business name “CryptoLoc” in an attempt to retrospectively justify Respondent’s illegitimate registration of the disputed domain name. Therefore, Respondent’s choice of a business name incorporating Complainant’s mark cannot give rise in the circumstances of this case to rights or legitimate interests in the disputed domain name. See CyBerCorp Holdings, Inc. v. Jay Allman, FA244090 (Forum May 14, 2004) (“Respondent was aware of Complainant’s trademark at the time he registered the at-issue domain name. He appears to have been a customer of Complainant. Respondent’s choice of a business name and domain name incorporating Complainant’s trademark was made primarily because of the notoriety of Complainant’s mark and/or with complete disregard Complainant’s trademark rights. Naming oneself with another’s trademark does not legitimatize the use of the name in a domain name. Therefore, Respondent cannot claim rights in the domain name pursuant to Policy 4(c)(ii).”).
The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore satisfied Policy ¶ 4(a)(ii).
Policy ¶ 4(a)(iii) requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith. Policy ¶ 4(b) sets out a non-exhaustive list of circumstances that may indicate bad faith registration and use, including but not limited to:
“(i) circumstances indicating that [respondent] registered or … acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.
The Panel finds that Respondent has registered and used the disputed domain name in bad faith. By Respondent’s own admission, Respondent registered the disputed domain name during the course of his employment with Complainant without Complainant’s authorization and against Complainant’s will. Respondent was therefore aware of Complainant’s rights at the time of registration of the disputed domain name. Respondent’s awareness of Complainant’s mark supports a finding of bad faith. See HNA Group Co., Ltd. v. Allen Zhao, FA1809001809412 (Forum Oct. 29, 2018) (“Registration of a disputed domain name by a former employee may constitute actual knowledge in a complainant’s mark, thus supporting a finding of bad faith under Policy ¶ 4(a)(iii).”).
Finally, the Panel is of the view that Respondent’s offer to sell the disputed domain name to Complainant in an amount in excess of Respondent’s out-of-pocket costs constitutes, in the circumstances of this case, in particular given the prior relationship between Respondent and Complainant, strong evidence of registration and use of the disputed domain name in bad faith, in accordance with Policy ¶ 4(b)(i) as the value that Respondent seeks to secure from the sale of the disputed domain name is based on the value of Complainant’s trademark. See Compl. Annexure 13, which contains an email with a Sales Agreement from Respondent, who requests AU$38,700.00 in exchange for the transfer of the disputed domain name. See Murray R. Braun v. Judd Braun, FA1809001809057 (Forum Nov. 6, 2018). The fact that the disputed domain name is inactive does not prevent a finding of bad faith.
The Panel therefore finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has therefore satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cryptoloc.com> domain name be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: November 19, 2018
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