Bitwarden, Inc. v. Hunter Wheeler
Claim Number: FA2302002030405
Complainant is Bitwarden, Inc. (“Complainant”), represented by Christine B Redfield of Redfield IP PC, California, USA. Respondent is Hunter Wheeler (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bitwardien.online>, <bitwvarden.online>, <bitwvarden.store>, <bitwvarden.tech>, <bitwardien.tech>, <bitwardien.website> and <bitwvarden.website> (“Disputed Domain Names”). The Disputed Domain Names are registered with Hostinger, UAB. (“Registrar”).
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on February 3, 2023; Forum received payment on February 3, 2023.
On February 3, 2023, the Registrar confirmed by e-mail to Forum that the Disputed Domain Names are registered with it and that Respondent is the current registrant of the names. The Registrar has verified that Respondent is bound by its 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, 2023, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of February 27, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on the respondents’ registrations as technical, administrative, and billing contacts, and to their corresponding “postmaster” addresses.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 Disputed Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in BITWARDEN. Complainant holds a national registration for that trademark. Complainant submits that the Disputed Domain Names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Names.
Complainant alleges that Respondent registered and used the Disputed Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark, BITWARDEN, in connection with its password management and security software;
2. Complainant is the current owner of United States Patent & Trademark Office (“USPTO”) Reg. No. 5,580,631, registered October 9, 2018, for the trademark, BITWARDEN;
3. the Disputed Domain Names were all registered on January 31, 2023;
4. the names <bitwardien.online>, <bitwvarden.online>, <bitwardien.tech> and <bitwardien.website> are not in use and the <bitwvarden.store>, <bitwvarden.tech> and <bitwvarden.website> names resolve to content unrelated to Complainant’s business; and
5. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.
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.
Preliminary Issue: Multiple Respondents
Albeit that there is only one named Respondent, the Complaint includes submissions addressing Paragraph 3(c) of the Rules, which provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel observes that Complainant has done so since the information provided by the Registrar shows very minor differences between the registrations, most notably shifting street and house numbers in the same town in the same State which are given for “Hunter Wheeler”. These differences are so minor and the commonalities so obvious that the Panel finds that the Disputed Domain Names are owned and controlled by the same person, Respondent, and that Rule 3(a) is satisfied.
Primary Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration of BITWARDEN with the USPTO, a national trademark authority.
The Panel finds the Disputed Domain Names to be confusingly similar to the trademark. Each case involves a trivial misspelling of the word, “warden”, along with the “.online”, “.store”, “.tech” or “.website” gTLD. In each case the (misspelt) trademark remains recognizable (see, for example, Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) finding <blankofamerica.com> confusingly similar to the BANK OF AMERICA mark).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The name of the underlying domain name holder, as disclosed by the Registrar, is “Hunter Wheeler”. That name does not provide any indication that Respondent might be commonly known by any of the Disputed Domain Names. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademark.
There is no evidence of a bona fide offering of goods or services under Policy ¶ 4(c)(i), or of a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) of any of the Disputed Domain Names (see, for example, Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services...”); Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that none of those scenarios has obvious application. Accordingly, for the Complainant to prevail there must be evidence of registration in bad faith and use in bad faith. The Complaint appears to offer little more than apprehension of bad faith when it states that “Respondent registered and has used or intends to use the Domain Names primarily to profit from and exploit Complainant's BITWARDEN mark.” As stated already, the <bitwardien.online>, <bitwvarden.online>, <bitwardien.tech> and <bitwardien.website> names are not in use. The <bitwvarden.store>, <bitwvarden.tech> and <bitwvarden.website> names resolve to sites unrelated to Complainant. There is no indication that those sites are monetized in some way. The material appears to be randomly chosen and Complainant concedes that it is likely to be AI generated. The Panel finds no evidence of actual use with the intention to commercially benefit from Complainant’s trademark. Indeed, for the purpose of the following analysis, the Panel has treated all of the Disputed Domain Names as unused.
Complainant states that “[UDRP] Panelists have routinely determined that the non-use of a domain … would not prevent a finding of bad faith under the doctrine of passive holding”, citing the WIPO Overview 3.0, at Section 3.3, which states: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
The Complaint asserts that “these factors are present here. … the totality of circumstances, including the distinctiveness of the BITWARDEN mark and strong reputation of Complainant’s BITWARDEN branded password management products/services, the recent notoriety of Complainant and well publicized attempts by threat actors to engage in Google Ad phishing campaigns that threaten to expose Complainant’s customer’s passwords, together with the lack of evidence of actual or contemplated good-faith use, the Respondent’s concealment of its identity, and the implausibility of any good faith use to which the Domain Names can be put all point to a finding of bad faith here.”
The Panel observes that what is referred to as “passive holding in bad faith” derives from principles first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Much of what now appears at WIPO Overview 3.0, Section 3.3 is derived from that case where there was no use of the at-issue domain name but the panel came to the view that it could not envisage any unauthorized use which would be in good faith.
What is critical to an understanding of the decision is that the trademark at issue was so well-known that it was essentially recognized by the public as a whole. Here, Complainant refers to the “stellar reputation” of the trademark but the Panel notes that there is no proof of reputation in the sense required to show, for example, common law trademark rights, let alone anything more. Supporting material is essentially limited to a copy of an article from CNET, the reviewer of tech products, which named Complainant’s product bearing the trademark as “The Best Free Password Manager for 2022”. That is it, aside from the insinuation of reputation coming from evidence that the trademark has very recently been the target of phishing campaigns.
Albeit that the Complaint would not have supported a finding of trademark rights in the absence of registration, the Panel is by a fine margin minded to decide that within the niche market of security software products, the trademark is relatively well recognised.
Taking the remaining circumstances into account, including the assertion that the trademark is a coined term, there was no apparent reason for Respondent to register the Disputed Domain Names since the trademark appears to only refer to Complainant’s business and has no other shown meaning. In the absence of another explanation, the Panel finds that Respondent targeted Complainant’s trademark and business and so finds registration in bad faith. Further, although there is no use, the Panel cannot envisage any unauthorized use which would be in good faith. Accordingly, the Panel finds so-called passive holding in bad faith and so finds registration in bad faith.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitwardien.online>, <bitwvarden.online>, <bitwvarden.store>, <bitwvarden.tech>, <bitwardien.tech>, <bitwardien.website> and <bitwvarden.website> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 10, 2023
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