McAfee, Inc. v. Tan Kim Fong / Dong Wang
Claim Number: FA1210001465279
Complainant is McAfee, Inc. (“Complainant”), represented by CitizenHawk, Inc., California. Respondent is Tan Kim Fong a/k/a Dong Wang (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ncafee.com>, <mckafee.com>, <mcafre.com>, <mcafees.com>, and <mcaafee.com>, registered with Domain.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2012; the National Arbitration Forum received payment on October 1, 2012.
On October 2, 2012, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ncafee.com>, <mckafee.com>, <mcafre.com>, <mcafees.com>, and <mcaafee.com> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC 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 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@ncafee.com, postmaster@mckafee.com, postmaster@mcafre.com, postmaster@mcafees.com, and postmaster@mcaafee.com. Also on October 3, 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’s Default.
On November 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Complainant uses the MCAFEE mark for its computer programs, anti-virus programs, and utility programs. Complainant uses the MCAFEE SECURITY mark in relation to its computer consulting services, technical consulting and research services, computer hardware and software troubleshooting, computer virus removal, data encryption and authentication and other related uses.
2. Complainant owns trademark rights with the United States Patent and Trademark Office (“USPTO”) for its MCAFEE mark (Reg. No. 1,818,780 registered February 1, 1994) and its MCAFEE SECURITY mark (Reg. No. 2,885,736 registered September 1, 2004). See Exhibit E.
3. Complainant provides services that enable users to access the Internet securely in order to browse and shop more securely. Complainant’s business was founded in 1987 and is currently one of the largest online retailers of security solutions and have won awards for its products and services, including “Security Product of the Year,” Reader’s Choice Gold Award for “endpoint encryption,” and Best Small Business Technology Award. Complainant serves home users as well as large enterprises and distributes its protection to millions of consumers. Complainant owns the domain name <mcafee.com> to conduct online business and enjoys broad consumer recognition of the MCAFEE brand.
4. Respondent registered the <ncafee.com>, <mckafee.com>, <mcafre.com>, <mcafees.com> and <mcaafee.com> domain names, which resolve to a generic website containing links to third-party commercial websites, some of which directly compete with Complainant’s line of business, and for which Respondent earns referral fees.
5. The disputed domain names are confusingly similar to Complainant’s MCAFEE mark.
6. Respondent has no rights or legitimate interests in respect of the domain names.
7. Respondent is not commonly known by any of the disputed domain names and is not authorized to register domain names using Complainant’s mark. Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names.
8. Respondent registered and uses the disputed domain names in bad faith,
9. Respondent has demonstrated its history of typosquatting and has a history of registering domain names using other parties’ registered marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company that is one of the largest online retailers of security solutions and related services.
2. Complainant owns trademark rights with the United States Patent and Trademark Office (“USPTO”) for its MCAFEE mark (Reg. No. 1,818,780 registered February 1, 1994) and its MCAFEE SECURITY mark (Reg. No. 2,885,736 registered September 1, 2004). See Exhibit E.
3. Respondent registered the <ncafee.com> domain name on November 4, 2001, the <mckafee.com> domain name on June 22, 2000, the <mcafre.com> domain name on May 2, 2002, the <mcafees.com> on November 2, 2002 and the <mcaafee.com> domain name on October 23, 2002.
4. The disputed domain names resolve to a generic website containing links to third-party commercial websites, some of which directly compete with Complainant’s line of business and for which Respondent earns referral fees.
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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain names should be cancelled or transferred:
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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.”).
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the <ncafee.com> and <mcafre.com> domain names were registered by “Tan Kim Fong” and the <mckafee.com>, <mcafees.com> and <mcaafee.com> domain names were registered by “Dong Wang” and alleges that the two registrants are the same entity. Complainant supports its argument with evidence demonstrating that the domain names redirect to the same parked website at <usseek.com> and the IP Address for the redirects are all found at the same subnet. Complainant alleges that the similarities shared between the disputed domain names and their resolving websites demonstrate that one entity had control of all the domain names at issue.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s MCAFEE mark. Complainant contends that the <ncafee.com>, <mckafee.com>, <mcafre.com>, <mcafees.com>, and <mcaafee.com> domain names are confusingly similar to its MCAFEE mark, due to the misspellings within the domain names that consist of removing one letter in the mark and replacing it with another in the <ncafee.com> and <mcafre.com> domain names, or adding a letter to the mark, in the case of the <mckafee.com>, <mcafees.com> and <mcaafee.com> domain names. Complainant also alleges that the addition of the generic top-level domain (“gTLD”) in each of the domain names does not affect the determination of confusing similarity to Complainant’s mark. The Panel finds that each of the disputed domain names is confusingly similar to Complainant’s MCAFEE mark pursuant to Policy ¶ 4(a) (i) due to the one-letter difference between each domain name and the mark, as well as the addition of a gTLD. 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 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).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MCAFEE trademark and to use it in its domain names, making only the respective spelling changes mentioned above;
(b) Respondent has then decided to use the domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant alleges that the WHOIS record for the disputed domain names reflect an entity other than the trademark associated with Complainant is the registrant of the disputed domain names. Complainant provides evidence that the WHOIS information for the <ncafee.com> and <mcafre.com> domain names identify “Tan Kim Fong” as the registrant and the WHOIS information for the <mcafees.com>, <mckafee.com>, and <mcaafee.com> domain names identify “Dong Wang” as the registrant. The panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), determined that the respondent was not commonly known by the disputed domain name, based on the WHOIS information on the record. Similarly, the Panel finds that the WHOIS information for the <ncafee.com>, <mckafee.com>, <mcafre.com>, <mcafees.com> and <mcaafee.com> domain names does not show that Respondent is commonly known by the domain names and therefore concludes that Respondent fails to demonstrate that it has any rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).
(e) Complainant contends in its Policy ¶ 4(a) (iii) section that Respondent uses the <ncafee.com>, <mckafee.com>, <mcafre.com>, <mcafees.com> and <mcaafee.com> domain names to misdirect Internet users to its resolving website, which displays hyperlinks to commercial entities whose products and services compete with Complainant’s business. In H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel concluded that because the respondent’s disputed domain names resolved to a website that contained advertising links to third parties, many of whose products and services were in direct competition with those offered under the complainant’ mark, the respondent did not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel concludes that Respondent does not make a bona fide offering of goods or services under Policy ¶ (c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii) by rerouting Internet users to a website featuring competing businesses’ hyperlinks.
(f) Complainant argues that Respondent’s registration of the <ncafee.com>, <mckafee.com>, <mcafre.com>, <mcafees.com> and <mcaafee.com> domain names constitutes typosquatting, because each of the domain names appears to be a misspelling of Complainant’s MCAFEE mark, varying by only one letter. Complainant asserts in its Policy ¶ 4(a) (i) section that Respondent’s registration of the disputed domain names take advantage of Internet users’ typographical errors when attempting to reach Complainant’s website. In LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003), the panel concluded that the disputed domain names were intentionally misspelled versions of the complainant’s mark, which was evidence that the respondent typosquatted the domain name and demonstrated the respondent’s lack of rights or legitimate interests in the domain names. The Panel concludes that by typosquatting the disputed domain names, Respondent lacks rights or legitimate interests in the <ncafee.com>, <mckafee.com>, <mcafre.com>, <mcafees.com>, and <mcaafee.com> domain names under Policy ¶ 4(a) (ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent holds other domain name registrations that exemplify typosquatting and serve as evidence of Respondent’s bad faith registration and use. Further, Complainant notes that Respondent has been the respondent in other prior UDRP proceedings in which it was ordered to transfer the disputed domain names to the respective complainants. See Microsoft Corp. v. Fong/Dong, FA 1265720 (Nat. Arb. Forum July 14, 2009); see also Travelocity.com LP v. Qadir/Fong, FA 1347880 (Nat. Arb. Forum Nov. 10, 2010). The Panel concludes that Respondent’s multiple prior UDRP registrations demonstrate Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b) (ii). See 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).
Secondly, Complainant argues that Respondent’s use of the <ncafee.com>, <mckafee.com>, <mcafre.com>, <mcafees.com> and <mcaafee.com> domain names disrupts Complainant’s business by displaying hyperlinks to businesses in competition with Complainant’s and diverting potential customers to Respondent’s website. The panel in Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), held that the respondent’s use of the resolving website to lure Internet consumers to the complainant’s competitors demonstrated bad faith registration and use. The Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b) (iii) by taking website visitors to Respondent’s resolving website and offering hyperlinks to competing commercial entities.
Thirdly, Complainant contends that Respondent’s bad faith registration and use is shown by its use of the disputed domain names to host a “click-through” website, through which Respondent makes a profit generating referral fees in exchange for hosting hyperlinks to Complainant’s competitors. Complainant argues that Respondent attracts consumers by using confusingly similar domain names in order to make a profit. The Panel concludes that by confusing Internet users and attracting traffic to its website in order to make a financial gain by offering hyperlinks to Complainant’s competitors’ websites, Respondent demonstrates bad faith registration and use pursuant to Policy ¶ 4(b) (iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Fourthly, Complainant alleges that Respondent is a typosquatter, as shown by its registration of the <ncafee.com>, <mckafee.com>, <mcafre.com>, <mcafees.com>, and <mcaafee.com> domain names, which Complainant argues intercepts traffic by preying on Internet users who make unintentional typing errors when attempting to access Complainant’s website. The Panel finds that each of the domain names varies from Complainant’s MCAFEE mark by only one letter, which is evidence of typosquatting and demonstrates that Respondent registered the disputed domain names in bad faith pursuant to Policy ¶ 4(a) (iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the MCAFEE mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ncafee.com>, <mckafee.com>, <mcafre.com>, <mcafees.com>, and <mcaafee.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 2, 2012
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