McAfee, Inc. v. HEMANG INFRASRUCTURE PRIVATE LIMITED
Claim Number: FA1204001439615
Complainant is McAfee, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is HEMANG INFRASRUCTURE PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcaffe.com>, registered with Tirupati Domains & Hosting Pvt. Ltd..
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2012; the National Arbitration Forum received payment on April 16, 2012.
On April 18, 2012, Tirupati Domains & Hosting Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <mcaffe.com> domain name is registered with Tirupati Domains & Hosting Pvt. Ltd. and that Respondent is the current registrant of the name. Tirupati Domains & Hosting Pvt. Ltd. has verified that Respondent is bound by the Tirupati Domains & Hosting Pvt. Ltd. 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 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 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@mcaffe.com. Also on April 18, 2012, 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 May 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world’s largest dedicated security technology company.
Complainant owns a registration, on file with the United States Patent and Trademark Office (“USPTO”) for its MCAFEE trademark (Reg. No. 1,818,780, registered February 1, 1994).
Complainant uses the MCAFEE mark in connection with the marketing of com-puter programs such as anti-virus programs.
Respondent uses the disputed <mcaffe.com> domain name to host pay-per-click links to the websites of Complainant’s commercial competitors.
Respondent’s <mcaffe.com> domain name is confusingly similar to Complain-ant’s MCAFEE trademark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not sponsored by or affiliated with Complainant in any way, and Complainant has not given Respondent permission to use its MCAFEE trade-mark in a domain name.
Respondent is not making a bona fide offering of goods or services or a legiti-mate noncommercial or fair use of the contested domain name.
Respondent has been the Respondent in several prior UDRP decisions in which it was ordered to transfer disputed domain names to the various Complainants.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the disputed domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the MCAFEE trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights in the mark for purposes of Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a country other than that in which respondent resides or operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in its mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under the Policy whether a complainant has registered its trademark in the country of a respondent’s residence).
Moreover, the contested <mcaffe.com> domain name is confusingly similar to Complainant’s MCAFEE mark. The domain name is merely a slightly misspelled copy of the mark (replacing an “e” with an “f”), with the addition of the required generic top-level domain (“gTLD”), in this case “.com.” These alterations of the mark, made in forming the domain name, do not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the domain name merely replaced the letter “i” in a complainant's mark with the letter “e”); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (holding that a respondent’s disputed domain names were confusingly similar to a complainant’s mark because the domain names were common misspellings of the mark involving keyboard keys that were adjacent to those comprising that complainant’s mark); further see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
The Panel therefore finds that Respondent’s <mcafee.com> domain name is confusingly similar to Complainant’s MCAFEE trademark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <mcaffe.com> domain name, that Respondent is not sponsored by or affiliated with Complainant, and that Complainant has not given Respondent permission to use its mark in a domain name. Further, the pertinent WHOIS identifies the registrant of the contested domain name only as “HEMANG INFRASRUCTURE PRIVATE LIMITED,” which does not resemble the domain name. On this record we conclude that Respond-ent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See, for example, Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in those domains under Policy ¶ 4(c)(ii), where neither the relevant WHOIS information, nor any other information in the record, indicated that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also M. Shanken Commc’ns v. WORLDTRAVELERS-ONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so had no rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, in that Respondent uses the disputed domain name to resolve to a website containing pay-per-click hyperlinks to the websites of Complainant’s commercial compet-itors. We concur. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights to or legit-imate interests in the <bravoclub.com> domain name because that respondent used the domain name to operate a website containing links to various com-mercial websites operating in competition with the business of a complainant, which the panel found to be a use not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that, where a respondent failed to offer any goods or services on its website other than links to third-party web-sites, 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)). Complainant contends Respondent is using the disputed domain name to host pay-per-click links to third-party websites, some of which directly compete with Complainant’s business. The Panel therefore finds that Respondent has failed to make 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).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has engaged in a pattern of bad faith registration and use of domain names, as evidenced by previous UDRP decisions involving Respondent in which panels transferred domain names to various complainants. See Enterprise Holdings, Inc. v. Hemang Infrastructure Private Limited, FA 1341222 (Nat. Arb. Forum Oct. 12, 2010); see also Monhegan Tribal Gaming Authority v. Hemang Infrastructure Private Limited, FA 1316787 (Nat. Arb. Forum May 12, 2010); fur-ther see Blu Media Inc. v. Hemang Infrastructure Private Limited, FA 1305977 (Nat. Arb. Forum Mar. 22, 2010). This pattern stands as evidence that the regis-tration and use of the instant domain name has likewise been in bad faith under Policy ¶ 4(b)(ii). See, for example, Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith regis-tration and use pursuant to Policy ¶ 4(b)(ii) where a respondent had been subject to other UDRP proceedings in which panels ordered the transfer of do-main names containing the trademarks of various complainants).
It is also evident form the record that Respondent attempts to gain commercially, via the receipt of revenues in the form of pay-per-click fees linked to the visits of Internet users to the websites of enterprises competing with the business of Complainant. This it does by creating confusion among Internet users as to the possibility of Complainant’s affiliation with the <mcaffe.com> domain name, which we have found is confusingly similar to Complainant’s MCAFEE trade-mark. This is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website offering links to third-party websites that featured services similar to those of a complainant); see also 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 web-site which features links to competing … commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith regis-tration and use pursuant to Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(c)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <mcaffe.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 25, 2012
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