McAfee, Inc. v. Above.com Domain Privacy
Claim Number: FA1410001586124
Complainant is McAfee, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcasee.com>, registered with ABOVE.COM PTY LTD.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 21, 2014; the National Arbitration Forum received payment October 21, 2014.
On October 27, 2014, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <mcasee.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. verified that Respondent is bound by the ABOVE.COM PTY LTD. registration agreement and 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 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@mcasee.com. Also on October 27, 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 November 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon, Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant owns the MCAFEE mark by virtue of its registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,818,780, registered Feb. 1, 1994). Complainant uses the mark for computer programs, namely anti-virus programs. The <mcasee.com> domain name is confusingly similar to the MCAFEE mark.
Respondent lacks rights in the <mcasee.com> domain name. Respondent is not commonly known by the <mcasee.com> name, and Complainant has not authorized Respondent to use the mark. Respondent is using the disputed domain name to redirect users to a website filled with third-party websites, some of which, including “Norton Anti Virus,” compete with Complainant’s anti-virus programs.
Respondent’s bad faith is demonstrated first by Respondent’s use of the disputed domain name to promote links in competition with Complainant. In addition, Respondent likely generates revenue through the promote hyperlinks, which demonstrates Respondent’s efforts to misdirect Internet users for commercial gain. Third, as the disputed domain name resolves to promote links related to Complainant and in competition with Complainant, Respondent must have known of Complainant and its mark at the time of the domain registration. Finally, Respondent’s registration of a typosquatted version of Complainant’s mark is evidence itself of bad faith.
Respondent did not submit a response.
The Panel notes that Respondent registered the disputed domain name September 19, 2009, several years after Complainant acquired legal rights by registration in 1994.
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in Complainant’s mark or the disputed domain name.
The domain name is confusingly similar to Complainant’s mark.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar
Complainant uses the MCAFEE mark for computer programs, namely anti-virus programs. Complainant owns rights in the MCAFEE mark by virtue of its registration with the USPTO (Reg. No. 1,818,780, registered Feb. 1, 1994). The Panel agrees that Complainant’s registration of the MCAFEE mark with the USPTO satisfies the rights requirement of Policy ¶ 4(a)(i). See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Complainant argues that the <mcasee.com> domain name is confusingly similar to the MCAFEE mark. The Panel notes that the disputed domain name incorporates a misspelled version of the mark, namely the domain name substitutes the “f” in MCAFEE with an “s,” and adds the generic top-level domain (“gTLD”) “.com.” Prior panels have found confusing similarity in the presence of similar alterations. For example, in Orbitz Worldwide, LLC v. MGA LIMITED / mgaenterpriseslimited , FA 151503 (Nat. Arb. Forum Oct. 4, 2013), the panel wrote: “Respondent’s <cheaptiekets.com> domain name is confusingly similar to Complainant’s CHEAPTICKETS.COM mark, because the domain name merely replaces the letter ‘c’ in the word “tickets” with the letter ‘e.’” Here, the Panel agrees that the <mcasee.com> domain name is confusingly similar to the MCAFEE mark pursuant to Policy ¶ 4(a)(i) as the domain name merely differs from the mark by a single substituted letter.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 Respondent lacks rights in the <mcasee.com> domain name. Complainant argues that Respondent is not commonly known by the <mcasee.com> name, and that Complainant has not authorized Respondent’s use of the mark. The Panel notes that the WHOIS information identifies “Above.com Domain Privacy” as the registrant of record, which serves no Policy ¶ 4(c)(ii) value for Respondent. Based on the available evidence, the Panel finds no basis to hold that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is using the disputed domain name to redirect users to a website filled with third-party websites, some of which, including “Norton Anti Virus,” compete with Complainant’s anti-virus programs. See Compl., at Attached Ex. H. The Panel agrees that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) and has not made a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) as the disputed domain name resolves to a website featuring links to third-parties including Complainant’s competitors in the commercial area of anti-virus programming. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent’s bad faith is demonstrated first by Respondent’s use of the disputed domain name to promote links in competition with Complainant. The Panel recalls that the <mcasee.com> domain name resolves to a website promote links such as “Free Norton Antivirus,” “Network Security,” and “Mcafee Software Sale.” See Compl., at Attached Ex. H. The Panel finds that Respondent engaged in bad faith use and registration pursuant to Policy ¶ 4(b)(iii) as evidenced by Respondent’s promotion of links to competitors of Complainant at the website resolving from the <mcasee.com> domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website, which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
In addition, Complainant argues that Respondent likely generates revenue through the promote hyperlinks, which demonstrates Respondent’s efforts to misdirect Internet users for commercial gain. Prior panels have found evidence of Policy ¶ 4(b)(iv) bad faith where evidence shows that the respondent uses the confusingly similar domain name to promote links in competition with the complainant and the respondent is likely generating click-through revenue in the process. 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.’”). Here, the Panel finds that Respondent’s use of the disputed domain name, as detailed in Complainant’s Exhibit H, to promote links to Complainant and Complainant’s competitors likely for commercial gain, supports findings of Policy ¶ 4(b)(iv) bad faith use and registration.
Complainant argues that as the disputed domain name resolves to promote links related to Complainant and in competition with Complainant, Respondent must have known of Complainant and its mark at the time of domain registration. See Compl., at Attached Ex. H. The Panel finds here that given Respondent’s use of the domain name containing Complainant’s protected mark, and given the renown of that mark, Respondent had actual knowledge based on the associated use of the disputed domain name, also supporting findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Finally, Complainant argues that Respondent’s registration of a version of Complainant’s mark is evidence itself of bad faith. The Panel recalsl that the disputed domain name deviates from Complainant mark by a single substituted letter. Prior panels consistently find evidence of bad faith where the respondent engages in typosquatting. See Indep. Ins. Agents & Brokers of Am., Inc. v. Liqian, FA 1582252 (Nat. Arb. Forum Nov. 10, 2014) (“Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string […] Respondent’s typosquatting is, in itself, evidence of Policy ¶ 4(a)(iii) bad faith.”). This Panel finds that Respondent engaged in typosquatting by substituting the “f” in MCAFEE for an “s,” and that this substitute constitutes evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <mcasee.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 9, 2014
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