McAfee, Inc. v. Ali Aziz
Claim Number: FA0907001275132
Complainant is McAfee,
Inc. (“Complainant”), represented by
CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <acafee.com>, <mcacfee.com>, <mcafey.com>, <mcffee.com>, and <msafee.com>, registered with Dotregistrar.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 23, 2009.
On July 23, 2009, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <acafee.com>, <mcacfee.com>, <mcafey.com>, <mcffee.com>, and <msafee.com> domain names are registered with Dotregistrar and that Respondent is the current registrant of the names. Dotregistrar has verified that Respondent is bound by the Dotregistrar registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 13, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@acafee.com, postmaster@mcacfee.com, postmaster@mcafey.com, postmaster@mcffee.com, and postmaster@msafee.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <acafee.com>, <mcacfee.com>, <mcafey.com>, <mcffee.com>, and <msafee.com> domain names are confusingly similar to Complainant’s MCAFEE mark.
2. Respondent does not have any rights or legitimate interests in the <acafee.com>, <mcacfee.com>, <mcafey.com>, <mcffee.com>, and <msafee.com> domain names.
3. Respondent registered and used the <acafee.com>, <mcacfee.com>, <mcafey.com>, <mcffee.com>, and <msafee.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, McAfee, Inc., offers security solutions and services for computer systems and networks. Complainant has operated under the MCAFEE mark since 1988. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MCAFEE mark (i.e., Reg. No. 1,818,780 issued February 1, 1994).
Respondent registered the <acafee.com>, <mcacfee.com>, <mcafey.com>, <mcffee.com>, and <msafee.com> domain names no earlier than April 30, 2002. The disputed domain names resolve to websites featuring links to Complainant’s competitors in the computer and network security solutions industry and other unrelated third parties. The resolving websites also displays Complainant’s MCAFEE mark spelt correctly.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Respondent operates in
Complainant alleges Respondent’s <acafee.com>, <mcacfee.com>, <mcafey.com>, <mcffee.com>, and <msafee.com> domain names are confusingly similar to Complainant’s MCAFEE mark. Respondent’s disputed domain names are simply misspellings of Complainant’s mark. The Panel finds the misspellings of Complainant’s mark do not distinguish the disputed domain names from the MCAFEE mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”). The disputed domain names also add the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of a gTLD is irrelevant to a Policy 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s MCAFEE mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <acafee.com>, <mcacfee.com>, <mcafey.com>, <mcffee.com>, and <msafee.com> domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant alleges Respondent is using the disputed domain names to resolve to a websites featuring links to Complainant’s competitors in the network and computer security industry and unrelated third parties. Respondent’s use of domain names that are confusingly similar to the MCAFEE mark to redirect Internet users for this purpose is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Previous panels have held that a respondent can establish rights or a legitimate interest in the disputed domain names if the respondent can prove it is commonly known by the disputed domain names. However, Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the disputed domain names. Complainant asserts that Respondent is not authorized to use the MCAFEE mark and Complainant further alleges that Respondent is not sponsored or legitimately affiliated with Complainant in any way. Complainant offers the WHOIS information, which identified Respondent as “Ali Aziz,” as evidence that Respondent is not commonly known by Complainant’s mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
In addition, Respondent’s use of the <acafee.com>, <mcacfee.com>, <mcafey.com>,
<mcffee.com>, and <msafee.com> domain names
constitutes typosquatting. The Panel
finds that Respondent’s use of domain names that are common misspellings of the
MCAFEE mark to redirect Internet users seeking Complainant’s network and
computer security websites fail to establish rights or interests pursuant to
Policy ¶ 4(a)(ii). See Microsoft
Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <acafee.com>, <mcacfee.com>, <mcafey.com>, <mcffee.com>, and <msafee.com> domain names to redirect Internet users, interested in Complainant’s network and computer security products, to the resolving websites featuring links to Complainant’s competitors in the security industry and other unrelated third parties. Thus, the Panel finds Respondent’s uses of the disputed domain names disrupt Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant further alleges that Respondent profits through
the receipt of click-through or other referral type fees from the links
featured on the resolving websites.
Respondent is attempting to profit by creating a likelihood of confusion
as to Complainant’s affiliation with the disputed domain names and resolving
websites. Therefore, the Panel finds
Respondent’s use of the disputed domain names constitutes bad faith
registration and use under Policy ¶ 4(b)(iv). See
Furthermore, Respondent has engaged in typosquatting through its use of the disputed domain names which are common misspellings of Complainant’s MCAFEE mark. Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acafee.com>, <mcacfee.com>, <mcafey.com>, <mcffee.com>, and <msafee.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 2, 2009
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