Webroot Inc. v. Isaac Goldstein
Claim Number: FA1410001583264
Complainant is Webroot Inc. (“Complainant”), represented by Dana P. Jozefczyk of Merchant & Gould, P.C., Colorado, USA. Respondent is Isaac Goldstein (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webroot.co>, registered with KEY-SYSTEMS GMBH.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2014; the National Arbitration Forum received payment on October 3, 2014.
On October 6, 2014, KEY-SYSTEMS GMBH confirmed by e-mail to the National Arbitration Forum that the <webroot.co> domain name is registered with KEY-SYSTEMS GMBH and that Respondent is the current registrant of the name. KEY-SYSTEMS GMBH has verified that Respondent is bound by the KEY-SYSTEMS GMBH 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 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 2014 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@webroot.co. Also on October 8, 2014, 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 October 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 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 owns the WEBROOT mark through its trademark registrations with the United States Patent and Trademark office (“USPTO”) (e.g., Reg. No. 2,405,273, registered November 21, 2000). Complainant uses the WEBROOT mark in connection with its business as a provider of computer security and antivirus software. Complainant operates online through <webroot.com>. The <webroot.co> domain name is confusingly similar to Complainant’s WEBROOT mark because Respondent has simply added a different generic top-level domain (“gTLD”) to the mark.
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <webroot.co> domain name. Respondent is neither licensed nor authorized to use the WEBROOT mark.
Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to redirect Internet users to a third-party website that offers competing products.
Respondent registered and uses the <webroot.co> domain name in bad faith. Respondent uses the disputed domain name to intentionally attract Internet users to its own website for commercial gain. Respondent had actual or constructive knowledge of Complainant’s rights in the WEBROOT mark. Respondent has failed to make an active use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Webroot, Inc., owns the WEBROOT mark through its trademark registrations with the United States Patent and Trademark office (“USPTO”) (e.g., Reg. No. 2,405,273, registered November 21, 2000). Complainant uses the WEBROOT mark in connection with its business as a provider of computer security and antivirus software. Complainant operates online through <webroot.com>.
Respondent, Isaac Goldstein, registered the disputed domain name on July 20, 2010. Respondent uses the disputed domain name to redirect Internet users to a third-party website that offers competing products.
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 owns the WEBROOT mark under Policy ¶ 4(a)(i) through trademark registrations with the USPTO . 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)”).
The <webroot.co> domain name is identical to Complainant’s WEBROOT mark under Policy ¶ 4(a)(i) because Respondent has simply added a gTLD to the mark. See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain).
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).
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <webroot.co> domain name Policy ¶ 4(c)(ii). The WHOIS information identifies “Isaac Goldstein” as the registrant of the disputed domain name. Respondent is neither licensed nor authorized to use the WEBROOT mark. 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 that it is commonly known by the domain name).
Respondent has not provided a bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Respondent uses the disputed domain name to redirect Internet users to a third-party website that offers competing services to that of Complainant. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Respondent uses the disputed domain name to intentionally attract Internet users to its own website for commercial gain which is evidence of bad faith under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent actually knew of Complainant’s rights in the mark when Respondent registered the <webroot.co> domain name. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webroot.co> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 18, 2014
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