McAfee, Inc. v. QTK Internet/Name Proxy/Private Registration /Damian Macafee
Claim Number: FA1010001351950
Complainant is McAfee, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is QTK Internet/Name Proxy/Private Registration /Damian Macafee (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <macafee.com>, registered with Resell.biz.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have known no conflict in serving as Panelist in this proceeding.
Flip Petillion (Chair), Judge Carolyn Marks Johnson, Judge Karl Fink (Ret.) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2010; the National Arbitration Forum received payment on October 13, 2010.
On October 13, 2010, Resell.biz confirmed by e-mail to the National Arbitration Forum that the <macafee.com> domain name is registered with Resell.biz and that Respondent is the current registrant of the name. Resell.biz has verified that Respondent is bound by the Resell.biz 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 October 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@macafee.com. Also on October 19, 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.
A timely Response was received and determined to be complete on November 9, 2010. However, the annexes to the Response were not timely received. Therefore, the Response is not in compliance with Forum Supplemental Rule 5(c)(i). Nevertheless, the Panel is free to choose whether to accept and consider this Response. 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 J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”). In the instant case and in order to have a complete view of the file, the Panel did take the annexes into consideration.
The Complainant filed an Additional Submission in a timely manner, but the requisite payment was received one day late. Although this submission was not in compliance with Supplemental Rule #7, the Panel took the Additional Submission into consideration also in view of having a complete view of the file. Respondent also filed an Additional Submission in response. This was done in a timely manner.
On November 23, 2010, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Flip Petillion (Chair), Judge Carolyn Marks Johnson, Judge Karl Fink (Ret.) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
McAfee, Inc. is a large dedicated security technology company, operating worldwide and active online in selling its security solutions and services. Complainant asserts to be the owner of numerous US trademark and or service mark registrations that consist of or include the words MCAFEE and that it has continuously used the MCAFEE mark for computer programs, anti-virus programs, network security and computer consulting services since its start in 1988.
Complainant argues that Respondent registered the domain name <macafee.com> and that this name is confusingly similar to Complainant’s registered mark. Complainant further contends that Respondent has no rights or legitimate interests in the domain name. Complainant contends that Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent alleges that the disputed domain name is the surname of the owner of Respondent’s business, and as such is not confusingly similar to Complainant’s mark. Further, Respondent contends that the domain name is spelled differently than Complainant’s mark, thereby alleviating the confusing similarity issue as well.
Respondent further contends that the domain name was registered with the surname of Respondent’s owner and that he therefore has legitimate rights in the domain name. Respondent further contends that Complainant had been aware for many years that the domain name in question is a surname, not related to them, and the related use is a mutual agreement and arrangement. Respondent argues that he did not register or use disputed in bad faith and that the Complaint constitutes an abuse of process, and an attempt at reverse domain name hijacking.
C. Additional Submissions
1. Complainant
In its Additional Submission, Complainant argues that Respondent's claim that the disputed domain name <macafee.com> would be a proper surname does not excuse or justify his misuse of the disputed domain name because the disputed domain name is confusingly similar to the Complainant's registered trademark. Complainant further argues that the cases mentioned by Respondent to support its argument that he would have legitimate rights should be afforded no weight because these clearly are not typos. Furthermore, according to Complainant, the Respondent fails to provide an explanation of these cases that support his position.
Complainant further contends that Respondent's alleged approved use of the disputed domain name does not excuse the Respondent's misuse of the domain name. Complainant argues that Respondent’s assertion that Complainant would be engaging in abuse of process and attempts at domain name hijacking is unfounded and without merit. Finally Complainant reasserts its claims from the original Complaint that the Respondent is a known recalcitrant squatter.
2. Respondent
In its Response to the Additional Submission, Respondent implores the Panel to employ the so-called reasonable person test. According to Respondent, if Complainant had a good-faith belief that the name was being used improperly, they could have taken any number of different actions, such as asking their product not be used nor mentioned on the site, at all or they could also have terminated the affiliate relationship.
Respondent further argues that Complainant incorrectly implies that their instructions were not followed. According to Respondent, Complainant’s own exhibit proves that, in fact, the instructions were followed. Respondent also argues that if said instructions would not have been followed, that Complainant would certainly have re-intervened.
Respondent finally contends that Complainant filed its complaint in an attempt of reverse domain name hijacking. According to Respondent, Complainant’s awareness of Mr. Macafee, and the associated domain name for more than 7 years, suggests that they did not previously consider the use as a bad-faith registration.
Complainant is the holder of several 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). Complainant continuously used the MCAFEE mark for computer programs, anti-virus programs, network security and computer consulting services.
Respondent registered the domain name <MACAFEE.COM> on February 20, 2000. At that time, Complainant’s trademark was already well-known.
Complainant and Respondent cooperated in an affiliate program. During this cooperation a dispute arose regarding the use of the disputed domain name. Contrary to the cooperation agreement, Respondent provided a landing page with a link to Complainant’s website without providing any information on his relationship with Complainant.
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 submits evidence to show that it owns several 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). According to the Panel, Complainant hereby proves to possess rights in its mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of 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 the <macafee.com> domain name is confusingly similar to Complainant’s MCAFEE mark. Complainant contends that the disputed domain name merely adds the letter “a” to Complainant’s mark while also adding the generic top-level domain (“gTLD”) “.com,” and that such additions to its mark are not sufficient to distinguish the domain name from its mark. The Panel finds that Respondent’s <macafee.com> domain name is confusingly similar to Complainant’s MCAFEE mark under Policy ¶ 4(a)(i). 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 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 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).
Under Policy ¶ 4(a)(ii), the Complainant has the burden of establishing that respondent has no rights or legitimate interests in respect of the domain name.
Nevertheless, if Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant contends that Respondent is not commonly known by the disputed domain name nor has Respondent been given permission to use Complainant’s mark in a domain name. The WHOIS information for the disputed domain name identifies “QTK Internet/Name Proxy/Private Registration /Damian Macafee” as the registrant, which Complainant argues is not similar to the domain name. Respondent on the other hand, claims that the domain name was registered with the surname of Respondent’s owner. Nevertheless, Respondent provides no evidence that the name “Damian Macafee” is used for other reasons than the registration of domain names. According to Respondent, Damian Macafee could not be contacted during the proceedings. Respondent, James M. van Johns, states to be representing Damian Macafee, and to be able to speak on his behalf, regarding the disputed domain name. However, in a previous UDPR proceeding James M. van Johns was not speaking on behalf of Damian Macafee, but would have been known as Damian Macafee. See Family & Children’s Center Inc. v. James M. Van Johns a.k.a. Damian Macafee, D2004-0497 (WIPO August 30, 2004).
Moreover, Damian Macafee is not mentioned in any of the correspondence regarding the domain name. Therefore, the Panel finds that Respondent, although appearing to be known as the disputed domain name, is not commonly known by the disputed domain name under 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 Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant contends and submits screen shot evidence to show that Respondent is using the disputed domain name to resolve to Complainant’s own official <mcafee.com> website in violation of Complainant’s affiliate program. Complainant argues that such use is evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). The Panel finds that Respondent’s use of the disputed domain name to resolve to Complainant’s official website, in violation of Complainant’s affiliate program is 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). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program); see also Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for the complainant’s affiliate program upon registering the domain name, which was a misspelling of the complainant’s mark, the respondent intended to use the domain name to generate profit at the complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)).
Complainant further alleges that Respondent’s registration and use of the <macafee.com> domain name is evidence of typosquatting. Since the Panel finds that Respondent is not known by the disputed domain name, the Panel finds that Respondent’s registration of a domain name can be considered a registration that contains a misspelled version of Complainant’s mark which is further evidence that Respondent does not have rights or legitimate interests in the domain name under 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”).
Complainant submits evidence to show that Respondent has been the Respondent in previous UDRP proceedings in which the panels have ordered Respondent to transfer the respective domain names to the complainants in those cases. See Choice Hotels Int’l, Inc. v. Macafee c/o QTK Internet/Name Proxy, FA 1249545 (Nat. Arb. Forum April 10, 2009); see also Radisson Hotels Int’l, Inc. v. Macafee d/b/a QTK Internet (Name Proxy), FA 652870 (Nat. Arb. Forum issued April 19, 2006); see also Sony Kabushiki Kaisha v. Macafee/QTK Internet/Name Proxy/Private Registration, D2009-1134 (WIPO October 12, 2009). Complainant contends that Respondent’s pattern of registering trademark infringing domain names in bad faith is evidence that Respondent registered the <macafee.com> domain name in bad faith. The Panel indeed finds that Respondent’s previous registrations of trademark infringing domain names is evidence that Respondent registered the domain name at issue in the present dispute in bad faith under Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant further contends that Respondent is using the disputed domain name to redirect Internet users to Complainant’s official website in violation of Complainant’s affiliate agreement. Complainant submits screen-shot evidence to show that Respondent’s website automatically redirects Internet users to Complainant’s website. The Panel finds that such use is also evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program); see also Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program).
Complainant contends that Respondent’s registration and use of a typosquatted domain name is evidence in itself that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). The Panel finds that Respondent’s registration and use of the disputed domain name that contains a misspelled version of Complainant’s mark is further evidence of Respondent’s bad faith registration and use under 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)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <macafee.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Judge Carolyn Marks Johnson, Judge Karl Fink (Ret.) Panelists
Dated: December 3, 2010
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