NETSCOUT SYSTEMS, INC. v. Aleksandras Krispinovicius / UAB "inlusion Netforms"
Claim Number: FA2004001893516
Complainant is NETSCOUT SYSTEMS, INC. (“Complainant”), represented by Matthew J. Anderson of Munck Wilson Mandala, LLP, United States. Respondent is Aleksandras Krispinovicius / UAB "inlusion Netforms" (“Respondent”), Lithuania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netscoutcloud.com>, registered with Tucows Domains Inc., Tucows, Inc..
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 April 24, 2020; the Forum received payment on April 24, 2020.
On April 24, 2020, Tucows Domains Inc., Tucows, Inc. confirmed by e-mail to the Forum that the <netscoutcloud.com> domain name is registered with Tucows Domains Inc., Tucows, Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc., Tucows, Inc. has verified that Respondent is bound by the Tucows Domains Inc., Tucows, 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 May 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2020 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@netscoutcloud.com. Also on May 4, 2020, 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 June 1, 2020, 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.
Complainant, Netscout Systems, Inc., operates in the business of network infrastructure, security, analytics, and other hardware and software. Complainant has rights in the NETSCOUT mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,764,154, registered Apr. 13, 1993). See Amend. Compl. Ex. H. Respondent’s <netscoutcloud.com> domain name is confusingly similar to Complainant’s mark because it incorporates the NETSCOUT mark, merely adding the term “cloud” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <netscoutcloud.com> domain name because Respondent is not licensed or authorized to use Complainant’s mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent purports to offer an unrelated product for sale.
Respondent registered and uses the <netscoutcloud.com> domain name in bad faith. Respondent offers to sell the disputed domain name. Also, Respondent previously used the disputed domain to pass itself off as Complainant to promote an unrelated business. Additionally, Respondent now fails to make any active use of the disputed domain name. Finally, Respondent had knowledge of Complainant’s pre-existing rights in the NETSCOUT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company operating in the business of network infrastructure, security, analytics, and other hardware and software.
2. Complainant has established its trademark rights in the NETSCOUT mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,764,154, registered Apr. 13, 1993).
3. Respondent registered the disputed domain name on February 4, 2015.
4. Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use, but purports to offer an unrelated product for sale.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the NETSCOUT mark based upon the registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the NETSCOUT mark with the USPTO (e.g., Reg. No. 1,764,154, registered Apr. 13, 1993). See Amend. Compl. Ex. H. Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s NETSCOUT mark. Complainant argues Respondent’s <netscoutcloud.com> domain name is confusingly similar to Complainant’s mark because it incorporates the NETSCOUT mark, merely adding the term “cloud” and the “.com” gTLD. Addition of generic or descriptive terms and a gTLD is generally insufficient to overcome the confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s NETSCOUT 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 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”).
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 NETSCOUT trademark and to use it in its domain name, adding the word “cloud” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on February 4, 2015;
(c) Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use, but purports to offer an unrelated product for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <netscoutcloud.com> domain name because Respondent is not licensed or authorized to use Complainant’s mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a mark may show that the respondent is not commonly known by that name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the disputed domain name as “Aleksandras Krispinoricius / UAB ‘inlusion Netforms’” and no information indicates that Complainant authorized Respondent to use the marks. See Amend. Compl. Ex. O. Therefore, the panel finds that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use since Respondent previously purported to offer an unrelated product for sale. A general intent to divert Internet users through the use of a confusingly similar domain name is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provides a screenshot of the Respondent’s webpage as of April 16, 2020 and notes that the webpage purported to sell a “server monitoring tool.” Complainant notes that the content at the disputed domain has since changed and currently resolves to a parked webpage. See Compl. Exs. M & N. The Panel agrees with Complainant and finds that Respondent does not use the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
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 argues that Respondent registered and uses the <netscoutcloud.com> domain name in bad faith based upon Respondent’s offer to sell the disputed domain name. An attempt to sell a disputed domain name to the trademark owner may be evidence of bad faith under Policy ¶ 4(b)(ii). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Complainant notes that Respondent attempted to solicit an offer for sale from Complainant after receiving Complainant’s correspondence relating to the domain. Complainant provides a copy of Respondent’s reply. See Amend. Compl. Ex. L. Thus, the Panel agrees with Complainant and finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(ii).
Secondly, Complainant argues that Respondent registered and uses the <netscoutcloud.com> domain name in bad faith because Respondent previously used the disputed domain to pass itself off as Complainant to promote an unrelated business. Use of a confusingly similar domain name to promote an unrelated business may evince a bad faith attempt to attract Internet users for commercial gain under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant provides screenshots of the website previously associated with the disputed domain name that purports to sell unrelated products under Complainant’s NETSCOUT mark. See Compl. Ex. M. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent now fails to make any active use of the <netscoutcloud.com> domain name. Inactive holding of a disputed domain name may act as evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provides a screenshot of the parked page currently resolving at the disputed domain. See Amend. Compl. Ex. N. Complainant argues that the current parked page does not amount to active use. The Panel agrees with Complainant and finds bad faith registration and use under Policy ¶ 4(a)(iii).
Fourthly, Complainant contends that Respondent had knowledge of Complainant’s pre-existing rights in the NETSCOUT mark. While constructive knowledge is insufficient, actual knowledge of a Complainant’s rights in a mark is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that Respondent should have known about Complainant’s rights because the NETSCOUT mark is frequently identified in public use and is well known by the general public. As the Panel agrees the actual knowledge is present, the Panel finds bad faith under 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 name using the NETSCOUT mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it 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 <netscoutcloud.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 2, 2020
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