McAfee, Inc. v. - / Domain Name
Claim Number: FA1203001436891
Complainant is McAfee, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is - / Domain Name (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cmafee.com>, <mcafea.com>, <mcafae.com>, <mcafaee.com>, <mcaufee.com>, <mcagee.com>, <mmcafee.com>, and <mcafree.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2012; the National Arbitration Forum received payment on April 16, 2012.
On April 17, 2012, Directi Internet Solutions Pvt. Ltd. D/B/A Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <cmafee.com>, <mcafea.com>, <mcafae.com>, <mcafaee.com>, <mcaufee.com>, <mcagee.com>, <mmcafee.com>, and <mcafree.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 April 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2012 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@cmafee.com, postmaster@mcafea.com, postmaster@mcafae.com, postmaster@mcafaee.com, postmaster@mcaufee.com, postmaster@mcagee.com, postmaster@mmcafee.com, and postmaster@mcafree.com. Also on April 24, 2012, the 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 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 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 <cmafee.com>, <mcafea.com>, <mcafae.com>, <mcafaee.com>, <mcaufee.com>, <mcagee.com>, <mmcafee.com>, and <mcafree.com> domain names are confusingly similar to Complainant’s MCAFEE mark.
2. Respondent does not have any rights or legitimate interests in the <cmafee.com>, <mcafea.com>, <mcafae.com>, <mcafaee.com>, <mcaufee.com>, <mcagee.com>, <mmcafee.com>, and <mcafree.com> domain names.
3. Respondent registered or used the <cmafee.com>, <mcafea.com>, <mcafae.com>, <mcafaee.com>, <mcaufee.com>, <mcagee.com>, <mmcafee.com>, and <mcafree.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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(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.”).
Complainant asserts that it has established its rights in the MCAFEE mark by registering it with the USPTO (Reg. No. 1,818,780 registered February 1, 1994). Complainant submits a printout from the USPTO website to verify its assertion regarding the registration of the MCAFEE mark. See Complainant’s Exhibit E. Based upon the evidence provided, the Panel concludes that Complainant has established its rights in the MCAFEE mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant also asserts that Respondent’s <cmafee.com>, <mcafea.com>, <mcafae.com>, <mcafaee.com>, <mcaufee.com>, <mcagee.com>, <mmcafee.com>, and <mcafree.com> domain names are confusingly similar to its MCAFEE mark. Complainant states that the disputed domain names all include the generic top-level domain (“gTLD”) “.com,” along with a simple typographically incorrect version of its MCAFEE mark. Complainant claims that Respondent has added, deleted, transposed, and substituted letters from its mark in each domain name. The Panel finds that the disputed domain names are all confusingly similar to Complainant’s MCAFEE mark under Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also 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 Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and 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 claims that Respondent is not commonly known by the disputed domain names. The Panel notes that Respondent has not provided any evidence to contradict the claims made by Complainant in this matter. The Panel also notes that the WHOIS information identifies the registrant of the disputed domain name as “- / Domain Name.” Based upon the evidence available, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); 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).
Complainant asserts that Respondent’s <mcafae.com>, <mcafea.com>, and <cmafee.com> domain names resolve to inactive websites. Complainant submits printouts from the website to which the abovementioned domain names resolve, all of which, the Panel finds, appear to support Complainant’s assertion. Therefore, the Panel concludes that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Complainant also asserts that Respondent’s <mcafaee.com>, <mcaufee.com>, <mcagee.com>, <mmcafee.com>, and <mcafree.com> domain names resolve to a website offering pop-up windows that seek to procure personal information from Internet users in a phishing scheme. The Panel notes that the printout provided by Complainant appears to indicate that Internet users will need to enter their e-mail address into the website to obtain a prize. Previous panels have held that using a disputed domain name phish for Internet users’ personal information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Complainant alleges that Respondent has engaged in typosquatting in the current dispute. Complainant claims that the disputed domain names are comprised of misspelled versions of its MCAFEE mark. Complainant states that letters are added, deleted, and transposed and that each time Respondent does this it constitutes typosquatting. The Panel finds that Respondent has engaged in typosquatting, and concludes that Respondent’s conduct further supports a finding that Respondent lacks rights and legitimate interests in the disputed domain names 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”).
The Panel finds that Respondent has engaged in typosquatting.
Complainant claims that Respondent has engaged in a pattern of registering infringing domain names based upon the multiple domain names registered in this matter. The Panel notes that there are eight total domain names included in this dispute. As a result, the Panel finds that Respondent’s registration of multiple domain names in this instance demonstrates bad faith registration and use under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Complainant claims that Respondent’s <mcafae.com>, <mcafea.com>, and <cmafee.com> domain names resolve to inactive websites. Previous panels have held that failure to make an active use of a disputed domain name demonstrates bad faith registration and use. See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Therefore, the Panel concludes that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent is attempting to trick Internet users into divulging personal information. Complainant states that Respondent’s <mcafaee.com>, <mcaufee.com>, <mcagee.com>, <mmcafee.com>, and <mcafree.com> domain names resolve to a website offering pop-up windows that seek to procure personal information from Internet users in a phishing scheme. The Panel finds that Respondent is attempting to phish for Internet users’ personal information, and concludes that Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). The Panel finds Respondent has engaged in “phishing” as alleged, and that this is a further basis for concluding Respondent has registered and used the disputed domain names in bad faith.
Complainant also alleges that Respondent is engaging in typosquatting with regard to the disputed domain names. As mentioned above, Complainant claims that the disputed domain names are all comprised of simple typographic errors of its MCAFEE mark. Previous panels have concluded that typosquatting provides further evidence of bad faith registration and use. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also 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).”). Therefore, if the Panel concludes that Respondent has engaged in typosquatting, and finds that Respondent’s engagement in said typosquatting further supports a finding 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 <cmafee.com>, <mcafea.com>, <mcafae.com>, <mcafaee.com>, <mcaufee.com>, <mcagee.com>, <mmcafee.com>, and <mcafree.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 29, 2012
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