Arbor Networks, Inc. v. Benjamin Dynkin / Atlas Cybersecurity
Claim Number: FA2006001899115
Complainant is Arbor Networks, Inc. (“Complainant”), represented by Amanda Greenspon of Munck Wilson Mandala, LLP, United States. Respondent is Benjamin Dynkin / Atlas Cybersecurity (“Respondent”), represented by Avraham S.Z. Cohn of Cohn Legal, PLLC, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atlas-cybersecurity.com> (“Domain Name”), registered with CloudFlare, 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 5, 2020; the Forum received payment on June 5, 2020.
On June 8, 2020, CloudFlare, Inc. confirmed by e-mail to the Forum that the <atlas-cybersecurity.com> domain name is registered with CloudFlare, Inc. and that Respondent is the current registrant of the name. CloudFlare, Inc. has verified that Respondent is bound by the CloudFlare, 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 June 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@atlas-cybersecurity.com. Also on June 15, 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.
A timely Response was received and determined to be complete on July 10, 2020.
On July 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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
Complainant, Arbor Networks, Inc., sells network security and monitoring software and services. Complainant has rights in the ATLAS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,370,076, registered Jan. 15, 2008). Respondent’s <atlas-cybersecurity.com> domain name is functionally and confusingly identical to Complainant’s ATLAS mark because it incorporates mark in its entirety, adding only a hyphen, the generic descriptor “cybersecurity” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <atlas-cybersecurity.com> domain name. Respondent is not licensed to use Complainant’s ATLAS mark and is not commonly known by the mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to pass off as Complainant in order to offer competing goods and services.
Respondent registered and uses the <atlas-cybersecurity.com> domain name in bad faith. Respondent creates a false association with Complainant in order to promote a competing business. Additionally, Respondent’s use of a privacy service to conceal its identity suggests bad faith. Further, Respondent registered the Domain Name with knowledge of Complainant’s rights in the ATLAS mark.
B. Respondent
The <atlas-cybersecurity.com> domain name is not confusingly similar to Complainant’s ATLAS mark due to the disparate services Respondent and Complainant respectively offer. Complainant does not provide broad network security services under the ATLAS mark, rather Complainant uses the ATLAS mark to refer to its research and analysis service it offers cybersecurity service providers. Respondent is not a competitor of Complainant’s ATLAS service, rather it is a potential customer.
Respondent is commonly known by the <atlas-cybersecurity.com> domain name as shown by Respondent’s use of the name in connection with its services. Respondent makes no attempt to confuse or mislead the public and instead uses the Domain Name as reference to its company name to offer materially different services than those provided by Complainant under the ATLAS mark.
Respondent does not use the <atlas-cybersecurity.com> domain name in bad faith. Respondent did not intentionally appropriate Complainant’s ATLAS mark and Respondent’s services and customer base are decidedly dissimilar to those of Complainant. Additionally, Respondent uses a privacy shield to maintain anonymity from nefarious actors rather than for any bad-faith motive.
Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the domain name <atlas-cybersecurity.com>, has not established all required elements of its claim, and thus its complaint must be denied.
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.
Complainant has rights in the ATLAS mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., 3,370,076, registered Jan. 15, 2008). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <atlas-cybersecurity.com> Domain Name is confusingly similar to the ATLAS mark as it fully incorporates the ATLAS mark and adds the generic or descriptive term “-cybersecurity” and the “.com” gTLD. The addition of a generic term to a wholly incorporated trade mark does not distinguish a disputed domain name from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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 (Forum Aug. 18, 2006) and 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 holds that Complainant has not made out such a prima facie case. Rather, there are factual and legal issues that are unresolved by the evidence presented and the Panel is of the opinion that this case is not one that is well suited for resolution under the Policy. See, e.g., AirMax Construçoes Aeronáuticas LTDA v. Richard Rofe / seamaxamerica.com, FA 1763605 (Forum Feb. 9, 2018) (finding serious issues of fact and law that “can be resolved only by the use of forensic powers which a Panel under the UDRP does not have, such as deposition evidence by cross examination, discovery….”).
Respondent, on its face, appears to operate an entirely legitimate business under the name “Atlas Cybersecurity”, from the website accessible from the Domain Name (“Respondent’s Website”). Since 2017, Respondent has been using the Domain Name, that corresponds to Respondent’s trading name, to promote its business offering cyber security services. Respondent’s Website does not either explicitly or (to the best of the Panel’s knowledge) implicitly make any reference to Complainant or otherwise suggest an affiliation. The record does not indicate that Respondent has sought to register any other domain names incorporating the ATLAS mark or engage in any other conduct that suggests the use of the Domain Name is anything other than for a bona fide offering of services. Indeed, the Respondent submits, and the Panel finds some force in the submission, that the services offered by Respondent under the Domain Name and the services offered by Complainant under the ATLAS mark are not competitive or overlapping.
For the purposes of this proceeding, which is summary in nature, the evidence in the Response is sufficient to warrant finding against the Complainant. However, the Panel wishes to make it clear that other remedies may be available to the Complainant in a different forum, and that nothing in this decision should be understood as providing a definitive finding on the respective mark rights of the parties, beyond the narrow question determined under this proceeding.
The Complainant alleges Respondent is engaging in passing off and there may also be an issue as to whether Respondent’s conduct is an infringement of Complainant’s ATLAS mark. The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited -- designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting -- and not intended to thwart every sort of questionable business practice imaginable). If the Complainant wishes to bring proceedings against the Respondent for trade mark infringement, passing off, or question the assertions and evidence of the Respondent’s conduct contained in the Response, such a proceeding is more appropriately brought in a court of competent jurisdiction.
The Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the Domain Name.
In light of the Panel’s dispositive finding on the issue of rights or legitimate interests, the Panel declines to address the question of registration and use in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <atlas-cybersecurity.com> domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: July 17, 2020
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