McAfee, Inc. v. Keith Carcasole
Claim Number: FA0909001286934
Complainant is McAfee,
Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <macaffe.com>, registered with Enom, Inc.
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 September 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 30, 2009.
On September 30, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <macaffe.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 October 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 21, 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@macaffe.com by e-mail.
On October 27, 2009, Respondent filed a Response the Forum deemed was deficient because it was not received prior to the Response deadline.
On October 27, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <macaffe.com> domain name is confusingly similar to Complainant’s MCAFEE mark.
2. Respondent does not have any rights or legitimate interests in the <macaffe.com> domain name.
3. Respondent registered and used the <macaffe.com> domain name in bad faith.
B. Respondent failed to submit a timely 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 (e.g., Reg. No. 1,818,780 issued February 1, 1994).
Respondent registered the <macaffe.com> domain name on September 1, 1998. Respondent’s disputed domain name resolves to
a website prominently displaying Complainant’s MCAFEE mark and Complainant’s
symbols while offering computer security products and services in direct
competition with Complainant.
Preliminary Issue:
Deficient Response
Respondent has submitted a Response that was deemed
deficient because it was received after the Response deadline. Thus the
National Arbitration Forum does not consider the Response to be in compliance
with ICANN Rule 5. The Panel finds the
Response offers no substantive value to these proceedings and was received well
past the Response deadline. Therefore,
the Panel chooses to decline to consider the untimely and deficient Response in
these proceedings. See Six Continents Hotels,
Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the
respondent’s failure to submit a hard copy of the response and its failure to
include any evidence to support a finding in its favor placed the respondent in
a de facto default posture, permitting the panel to draw all appropriate
inferences stated in the complaint); see
also S. Exposure v. S.
Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000) (without an adequate timely filed response, all reasonable
inferences of fact in the allegations of the complaint will be taken as true).
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 timely, substantive 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.
Complainant obtained a number of trademark registrations for
the MCAFEE mark with the USPTO (e.g., Reg. No. 1,818,780 issued February 1,
1994). The Panel finds that Complainant
has established rights in the MCAFEE mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Reebok Int’l Ltd. v.
Complainant argues that Respondent’s <macaffe.com> domain name is confusingly similar to
Respondent’s MCAFEE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains a
misspelled version of Complainant’s mark and adds the generic top-level domain
(“gTLD”) “.com.” The Panel finds that a
disputed domain name that contains a misspelled version of a complainant’s mark
creates a confusing similarity between the disputed domain name and the
complainant’s mark. See Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive); see also Granarolo
S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that
the <granarolo.com> domain name was confusingly similar to the
complainant’s registered G GRANAROLO mark). In addition, the Panel finds that
the addition of a gTLD is irrelevant in distinguishing a disputed domain name
from an established mark. 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); see also Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the <macaffe.com> domain name. When Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant has established a prima facie case and Respondent has failed to submit a Response to this proceeding. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Complainant contends that Respondent is neither commonly known by nor licensed to register the <macaffe.com> domain name. Respondent’s WHOIS information identifies Respondent as “Keith Carcasole.” The Panel finds that Respondent’s WHOIS information demonstrates that Respondent is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent’s disputed domain name
was registered on September 1, 1998 and resolves to Respondent’s commercial
website offering computer security products and services in direct competition
with Complainant. The Panel finds that
Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s]
SAFLOK mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
Additionally, Respondent’s disputed domain name resolves
to a website that imitates Complainant’s official website. This imitation is referred to as “passing off.” The Panel finds that Respondent’s attempt to
pass itself off as Complainant is further evidence that Respondent lacks rights
and legitimate interests under Policy ¶ 4(a)(i) in the
<macaffe.com>
domain name. See Am. Int’l
Group, Inc. v. Busby, FA 156251
(Nat. Arb. Forum May 30, 2003) (finding that the
respondent attempts to pass itself off as the complainant online, which is
blatant unauthorized use of the complainant’s mark and is evidence that the
respondent has no rights or legitimate interests in the disputed domain name); see also Crow
v. LOVEARTH.net, FA 203208 (Nat. Arb.
Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or
services, nor an example of a legitimate noncommercial or fair use under Policy
¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to
a registered mark, attempts to profit by passing itself off as Complainant . .
. .”).
Lastly, Respondent has engaged in the practice known as “typosquatting.” This occurs when domain names are registered with the intent of targeting Internet users who commit typographical errors. This practice constitutes evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of the complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent is using the disputed domain name to directly compete with Complainant by computer security products and services through the resolving website. The Panel finds that Respondent’s registration and use of the <macaffe.com> domain name to operate a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Respondent’s use of the confusingly similar <macaffe.com> domain name in order to intentionally attract Internet users to its website by creating a strong likelihood of confusion with Complainant’s MCAFEE mark and in order to offer computer security products and services in direct competition with Complainant is further evidence of bad faith. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the disputed domain name constitutes bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Complainant contends that Respondent is using the <macaffe.com> domain name to pass itself off as Complainant by prominently displaying Complainant’s MCAFEE mark and symbols on Respondent’s commercial website. The Panel finds that this constitutes bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
The Panel has determined that Respondent has engaged in typosquatting. The Panel need only note here that typosquatting is generally considered as sufficient evidence itself of bad faith registration and use under Policy ¶ 4(a)(iii). The Panel so finds in the instant case. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds that ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <macaffe.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 5, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum