national arbitration forum

 

DECISION

 

McAfee, Inc. v. Kim Sung KengClaim Number: FA1008001341440

 

PARTIES

Complainant is McAfee, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Kim Sung Keng (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mcaffee.com>, registered with CSL Computer Service Langenbach GmbH d/b/a Joker.com.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2010.

 

On August 20, 2010, CSL Computer Service Langenbach GmbH d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <mcaffee.com> domain name is registered with CSL Computer Service Langenbach GmbH d/b/a Joker.com and that Respondent is the current registrant of the name.  CSL Computer Service Langenbach GmbH d/b/a Joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH d/b/a Joker.com 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 August 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2010 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@MCAFFEE.COM by e-mail.  Also on August 20, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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" through submission of a Written Notice, as defined in Rule 1.  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <mcaffee.com> domain name is confusingly similar to Complainant’s MCAFEE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <mcaffee.com> domain name.

 

3.      Respondent registered and used the <mcaffee.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, McAfee, Inc., is a security technology company and online retailer of security solutions and services for home users, businesses, the public sector and service providers.  Complainant owns trademark registrations for the MCAFEE and related marks with the United States Patent and Trademark Office (“USPTO”):

 

MCAFEE                                Reg. No. 1,818,780     issued February 1, 1994 and

MCAFEE SECURITY Reg. No. 2,885,736     issued September 21, 2004.

 

Respondent, Kim Sung Keng, registered the <mcaffee.com> domain name on July 24, 2003.  The disputed domain name resolves to a directory-style website featuring presumed pay-per-click links to third-party websites, some of which are competing with Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant owns trademark registrations for the MCAFEE and related marks with the USPTO:

 

MCAFEE                                Reg. No. 1,818,780     issued February 1, 1994 and

MCAFEE SECURITY Reg. No. 2,885,736     issued September 21, 2004.

 

The Panel finds that Complainant’s registration of its mark with the USPTO provides sufficient evidence to prove Complainant has rights in the MCAFEE mark pursuant to Policy ¶ 4(a)(i), even when Respondent lives or operates outside the United States.  See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant argues that Respondent’s <mcaffee.com> domain name is confusingly similar to Complainant’s MCAFEE mark because the disputed domain only differs by one letter—an additional letter “f”—and the appended generic top-level domain (“gTLD”) “.com.”  The Panel finds that spelling mistakes like the inclusion of an extra letter that are likely the result of typographical errors fail to prevent confusing similarity under Policy ¶ 4(a)(i).  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)).  The Panel also finds that the addition of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis and does not distinguish the disputed domain name from Complainant’s 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).  Therefore, the Panel finds that Respondent’s <mcaffee.com> domain name is confusingly similar to Complainant’s MCAFEE mark according to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied. 

 

Rights or Legitimate Interests

 

Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent when alleging that Respondent lacks rights and legitimate interests.  Upon presentation of such a case, the burden shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name.  In the present case, the Panel finds that Complainant has satisfied its burden but that Respondent’s failure to respond has not met its burden.  The Panel finds, according to Policy ¶ 4(a)(ii), that Respondent’s default reflects Respondent’s lack of rights and legitimate interests in the disputed domain name and that Complainant’s allegations are true as stated.  See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  The Panel elects to consider all the evidence in the record, however, according to the Policy    ¶ 4(c) factors in order to determine whether Respondent has any rights and legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent is not sponsored by or legally affiliated with Complainant.  Complainant also asserts that Respondent has not been given permission to use Complainant’s mark and is not commonly known by the disputed domain name.  The WHOIS information for the <mcaffee.com> domain name lists the registrant as “Kim Sung Keng,” a name which has no association with the disputed domain name.  As a result, Complainant argues and the Panel finds that Respondent is not commonly known by the domain name and does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant contends that Respondent is using the <mcaffee.com> domain name to redirect Internet users to its directory website that displays pay-per-click links to other third-party websites, some of which compete with Complainant by offering antivirus and other security products.  The Panel finds that use of the disputed domain name to run a pay-per-click link hosting site does not fall within the bounds of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).

 

Complainant argues that Respondent’s <mcaffee.com> domain name is an example of typosquatting because the disputed domain name varies from Complainant’s mark only in the inclusion of an extra letter “f.”  Because the spelling mistake likely results from an unintentional typographical error, the Panel finds that such a domain name is characterized as typosquatting and serves as evidence that Respondent does not possess rights and legitimate interests for the purposes of Policy ¶ 4(a)(ii).  See 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’”); see also 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 Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).   

 

Registration and Use in Bad Faith

 

Complainant argues that many of the pay-per-click links featured at the <mcaffee.com> domain name redirect to websites dealing with antivirus software and related computer or security products.  Because these websites are therefore in competition with Complainant, Respondent’s use of the <mcaffee.com> domain name places Respondent in the position of a competitor and disrupts Complainant’s business.  The Panel finds that Respondent’s registration of the disputed domain indicates bad faith registration and use according to 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 Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).

 

Complainant alleges that Respondent aims to confuse Internet users with the confusingly similar <mcaffee.com> domain name in an effort to attract them to Respondent’s pay-per-click directory website.  Complainant asserts that Respondent registered the disputed domain name and uses it to host a pay-per-click website in order to commercially profit from the fame and goodwill associated with Complainant’s mark. The Panel finds that Respondent therefore registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).

 

The Panel has previously found that Respondent’s registration of the <mcaffee.com> domain name is typosquatting.  The Panel finds that typosquatting is evidence in and of itself of bad faith registration and use according to Policy ¶ 4(a)(iii).  See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.  

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mcaffee.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  September 23, 2010

 

 

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