Bitwarden, Inc. v. Yang Zhi Chao
Claim Number: FA2207002002910
Complainant is Bitwarden, Inc. (“Complainant”), represented by Christine B Redfield of Redfield IP PC, California, USA. Respondent is Yang Zhi Chao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bitwardens.com>, <bbitwarden.com>, <mybitwarden.com>, <combitwarden.com>, and <bitiwarden.com>, (‘the Domain Names’) registered with eName Technology Co., Ltd..
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2022; the Forum received payment on July 5, 2022. The Complaint was received in both Chinese and English.
On July 7, 2022, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <bitwardens.com>, <bbitwarden.com>, <mybitwarden.com>, <combitwarden.com>, and <bitiwarden.com> Domain Names are registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the names. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., Ltd. 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 July 14, 2022, the Forum served the Chinese and English language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 3, 2022 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@bitwardens.com, postmaster@bbitwarden.com, postmaster@mybitwarden.com, postmaster@combitwarden.com, postmaster@bitiwarden.com. Also on July 14, 2022, the Chinese and English language 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 August 10, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
PRELIMINARY ISSUE: LANGUAGE OF THE AGREEMENT
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. The Panel may choose to place the following language in the applicable place in the decision template, after review of the applicable rules on language of the proceedings under the UDRP:
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant owns the trade mark BITWARDEN in the USA registered, inter alia, for software with first use recorded as 2015.
The Domain Names registered or acquired by the Respondent in 2022 are confusingly similar to the Complainant’s mark all consisting of the Complainant’s mark or being misspellings of the Complainant’s mark with generic terms and/or the gTLD .com added and are classic cases of typosquatting.
Respondent has no rights and legitimate interests in respect of the Domain Names. Respondent has not been commonly known by the Domain Names and is not affiliated with the Complainant in any way. Complainant has not given Respondent permission to use the Complainant’s mark.
Respondent is using the Domain Names to redirect Internet users to competing pay per click links. This is not a bona fide offering of goods and services or a legitimate non commercial or fair use. This is bad faith pursuant to Policy 4 (b)(iv) by using the Domain Names to attract and mislead consumers for profit. This also disrupts the Complainant’s business under Policy 4 (b)(iii).
Typosquatting in itself is bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark BITWARDEN in the USA registered, inter alia, for software with first use recorded as 2015.
The Domain Names registered or acquired by the Respondent in 2022 have been used for competing pay per click links.
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 Domain Names each consist of the Complainant’s mark or a misspelled version of the Complainant's BITWARDEN mark (which is registered in USA for software with first use recorded as 2015), a generic term ‘my’ or ‘com’ and/or the gTLD .com.
The Panel agrees that misspellings do not distinguish the Domain Names from the Complainant's trade mark pursuant to the Policy. See Coachella Music Festival LLC v. Domain Administrator/China Capital Investment Limited, FA 1734230 (Forum July 17, 2017).
Previous panels have found confusing similarity when a respondent adds a generic term to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). Accordingly the Panel holds that the addition of the generic terms ‘com’ or ‘my’ to the Complainant’s trade mark in some of the Domain Names does not prevent confusing similarity between the relevant domain names and the Complainant’s mark.
The gTLD .com does not serve to distinguish the Domain Names from the Complainant’s mark. See Red Hat Inc v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
It is clear from the evidence that the Respondent has used the pages attached to the Domain Names to link to businesses competing with the Complainant through pay per link links. The usage of the Complainant’s mark which has a significant reputation in relation to competing services or goods is not fair as the pages attached to the Domain Names do not make it clear that there is no commercial connection with the Complainant. As such this use cannot amount to the bona fide offering of goods and services or a legitimate commercial or fair use. See Ashley Furniture Industries Inc. v. domain admin / private registrations aktien Gesellschaft, FA 1506001626253 (Forum July 29, 2015).
Typosquatting is also an indication of a lack of rights or a legitimate interests. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
The Respondent has not answered this Complaint or offered any explanation.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Domain Names that involve misspellings of the Complainant’s mark seek to take advantage of the situation where Internet users may make a typographical error. Typosquatting itself is evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v. Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith).
Additionally Respondent is using the Domain Names to point to pay per click links to make profit from promoting competitors of the Complainant in a disruptive and confusing manner. See Health Republic Insurance Company v. above.com Legal, FA 1506001622068 (Forum July 10, 2015) (‘The use of a domain name’s resolving web site 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).’ Accordingly the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to competing websites by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web sites or services offered on them under Policy 4(b)(iv). See also Capital One Financial Corp v. DN Manager/Whois-Privacy.Net Ltd, FA 1504001615034 (Forum June 4, 2015).
The Panel also notes the Respondent has registered several Domain Names involving the Complainant’s mark indicating a pattern of activity. See Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA1405001558045 (Forum July 10, 2014)
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under 4(b)(ii), (iii) and 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitwardens.com>, <bbitwarden.com>, <mybitwarden.com>, <combitwarden.com>, and <bitiwarden.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 10, 2022
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