Webroot Inc. v. chitranshu singh / polishsys technologies pvt ltd / Polishsys Technologies / Technical support / chitranshu singh / Employee
Claim Number: FA1805001787079
Complainant is Webroot Inc. (“Complainant”), represented by Dana P. Jozefczyk of Merchant & Gould, P.C., Colorado, USA. Respondent is chitranshu singh / polishsys technologies pvt ltd / Polishsys Technologies / Technical support / chitranshu singh / Employee (“Respondent”), represented by Aman Srivastava of Polishsys Technologies Pvt. Ltd..
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <installwebroot.org>, <web--root.org>,
<webroot-support.org>, registered with GoDaddy.com, LLC, and <web-root.org>, <webrootcom-safe.org>, and <webroot-com-safe.net>, registered with Name.com, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 16, 2018; the Forum received payment on May 16, 2018.
On May 18, 2018; May 21, 2018, GoDaddy.com, LLC; Name.com, Inc. confirmed by e-mail to the Forum that the <installwebroot.org>, <web--root.org>, and <webroot-support.org> domain names are registered with GoDaddy.com, LLC; and the <web-root.org>, <webrootcom-safe.org>, and <webroot-com-safe.net> domain names are registered with Name.com, Inc.; and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Name.com, Inc. have verified that Respondent is bound by the respective registration agreements 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 May 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2018 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@installwebroot.org, postmaster@web--root.org, postmaster@web-root.org, postmaster@webroot-support.org, postmaster@webrootcom-safe.org, postmaster@webroot-com-safe.net. Also on May 25, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 the domain names be transferred from Respondent to Complainant.
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 for Uniform Domain Name Dispute Resolution Policy (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 claims all domains subject to the present action are owned by a single entity when this Proceeding was filed, Polishsys Technologies pvt. Ltd. All domain names at issue but the <webroot-com-safe.net> domain name listed ownership by Respondent as the “Registrant Organization”. While the <webroot-com-safe.net> domain name was privacy protected, the phone number listed for the domain is 1-844-833-0610, which is the same number listed on the Polishsys website.
The Panel finds the disputed domain names are controlled by a single entity.
A. Complainant
FACTUAL AND LEGAL GROUNDS
Webroot Inc. (hereafter “Webroot”) is the owner of the Webroot family of trademarks used with a variety of products and services in the computer security and antivirus fields. Webroot has duly registered the mark WEBROOT in the United States and throughout the world. In particular, Webroot is the owner of the following marks in the United States:
[Table Omitted]
Webroot has also registered the WEBROOT mark in a number of countries around the world. All the foregoing marks are hereinafter referred to as Webroot’s “WEBROOT marks.”
Webroot has extensively used and advertised the WEBROOT marks in association with a wide range of products and services dating back to at least as early as 1996. Webroot has developed and marketed its business under the WEBROOT marks. Webroot has also invested substantial time, money and effort in creating, marketing, and maintaining its website located at webroot.com. Webroot’s products are also found on various online retail websites such as Amazon.com. (see <www.amazon.com/webroot>.) Webroot also maintains an online support system known as the Webroot Community, which provides message boards for community discussion and support as well as computer safety support services. (see <www. https://community.webroot.com/ >.) Webroot’s customer support services allow a user to a contact a customer support representative at various support centers around the world. Additionally, Webroot maintains a Facebook page at https://www.facebook.com/Webroot that has over 93,000 likes. As a result of the extensive promotion of the WEBROOT marks and trade name, Webroot has developed substantial goodwill and customer loyalty. WEBROOT is a distinctive, widely recognized trademark.
Complainant believes that the domains subject to the present action are in fact all owned by a single entity, Polishsys Technologies pvt. ltd. INSTALLWEBROOT.ORG, WEBROOTCOM- SAFE.ORG, WEB--ROOT.ORG, WEBROOT-SUPPORT.ORG, WEB-ROOT.ORG explicitly list, or listed at the time the present action was filed, ownership by Respondent as the “Registrant Organization.” WEBROOT-COM-SAFE.NET is privacy protected. However, a review of the WEBROOT-COM- SAFE.NET domain indicates that this domain is likewise owned by Respondent. Although the page does not presently display content, the phone number that was listed for WEBROOT-COM-SAFE.NET is 1- 844-833-0610, which is the same number that is listed on the Polishsys website, as well as on the INSTALLWEBROOT.ORG website, which is expressly listed as owned by Respondent. Respondent’s infringing domain names INSTALLWEBROOT.ORG, WEBROOTCOM-SAFE.ORG, WEB--ROOT.ORG, WEBRROOT-SUPPORT.ORG, WEB-ROOT.ORG, and WEBROOT-COM-SAFE.NET will hereafter be collectively referred to as “Respondent’s Infringing WEBROOT Domains.” The Respondent registered five of Respondent’s Infringing WEBROOT Domains with Go Daddy, LLC, under GoDaddy’s Domain Registration Agreement. WEB-ROOT.ORG is registered with Name.com, Inc., under Name.com’s Domain Registration Agreement. All of Respondent’s Infringing WEBROOT Domains were registered on or after January 25, 2017. The Respondent has no statutory or common law trademark rights or any other right or legitimate interest to Webroot’s WEBROOT Marks or to Respondent’s Infringing WEBROOT Domains. Webroot has not authorized or licensed Respondent to use Webroot’s WEBROOT marks or any derivative mark for any purpose.
WEBROOTCOM-SAFE.ORG, WEB--ROOT.ORG, WEBROOT-SUPPORT.ORG, WEB-ROOT.ORG and WEBROOT-COM-SAFE.NET are all recently and currently inactive. However, a review of the active page, INSTALLWEBROOT-ORG, screen captures of WEBROOT-COM-SAFE.NET and WEBROOTCOM-SAFE.ORG when they were active, and captures from the Wayback Machine for WEB- ROOT.ORG, during the period in which respondent owned this domain, indicates that Respondent uses these domains to offer customer support services for Webroot’s products. These screenshots show that Respondent uses the WEBROOT mark, as well as logo highly similar to the logo used on Webroot’s Facebook page. Respondent is not authorized to use the WEBROOT marks, or the logos associated with the WEBROOT marks.
Moreover, Respondent is not an authorized customer service provider of Webroot. Respondent’s website, however, boldly advertises that it is “Support for Webroot Antivirus.” Webroot has not authorized Respondent as a support provider and has not authorized Respondent to use the WEBROOT marks. However, Respondent’s use of the WEBROOT Marks and logos in association with support services for Webroot’s products strongly indicates that Respondent’s use is authorized or that Respondent is affiliated by Webroot, when the same is not true.
Respondent appears to enjoy commercial benefits through its use of Respondent’s Infringing WEBROOT Domains. By calling the customer care number provided on the websites, it is likely that a customer is being charged for using Respondent’s services. Moreover, as Respondent’s websites include information about a “Refund Policy,” some fee must be charged for Respondent’s services.
Respondent’s disclaimer at the bottom of Respondent’s Infringing WEBROOT Domains does not sufficiently disassociate Respondent from Webroot. The disclaimer is located at the bottom of Respondent’s WEBROOTCOM-SAFE.ORG website and states that the company “is an independent technical support service provider company for third party products, brands and service.” This disclaimer, however, still creates the impression that Respondent is associated with Webroot by claiming to be an “independent technical support service provider.” Respondent’s disclaimer does not cure Respondent’s unauthorized use of the WEBROOT’s marks.
Moreover, Respondent engages in a pattern of bad faith conduct by registering WEBROOT variant domains and providing customer support services thereon. Not only has Respondent registered the six domains, which are subject to the present action, it appears that it previously registered the domain name WEBROOTCOMSAFE.ORG, which was transferred to Complainant. See Webroot Inc. v. Chandresh singh, FA1710001756269, November 28, 2017. The Respondent for WEBROOTCOMSAFE.ORG was Chandresh Singh, with an address at Saryu Nagar Lucknow Road, Bahraich, Uttar Pradesh 271801, India. This is the same address as is listed for Polishsys Technologies. Moreover, screencaptures of the webrootcomsafe.org website that were taken prior to filing that UDRP action include the same customer service number as Respondent’s Infringing Webroot Domains and as Respondent. Additional research indicates that Mr. Singh is a director of Respondent. Respondent’s conduct evidences a pattern of bad faith.
Respondent’s continuous maintenance of Respondent’s Infringing WEBROOT Domains causes harm to Webroot and will continue to do so unless the domain names are transferred to Webroot. As Respondent is not, and has never been, affiliated with, sponsored or licensed by Webroot, Respondent does not have a legitimate interest in using Webroot’s WEBROOT Marks. Respondent appears to commercially benefit from its use of the WEBROOT marks. Moreover, Respondent’s disclaimer at the bottom of Respondent’s website does not cure Respondent’s unauthorized use. Finally, Respondent’s conduct evidences a pattern of bad faith. Transfer of Respondent’s Infringing WEBROOT Domains to Webroot is appropriate.
a. Respondent’s Infringing WEBROOT Domains Confusingly Similar to Webroot’s WEBROOT Trademarks.
Respondent’s Infringing WEBROOT Domains all contain the dominant feature WEBROOT, which is also the dominant feature in each of the WEBROOT marks. Additionally, the addition of the descriptive wording COM, SAFE, INSTALL, and SUPPORT as well as the suffixes .ORG and .NET do not distract from the overall impression of the domain names. Sony Kabushiki Kaisha v. Inja, Kil, D2000- 1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied). Confusion is particularly likely as the descriptive words COM SAFE, which appear to stand for “computer safety,” INSTALL, and SUPPORT are relevant to services provided by Webroot to its customers. Microsoft Corporation v. Wayne Lybrand, WIPO Case No. D2005-0020 (March 18, 2005) (Use of microsoftcustomerservice.com by unauthorized third party likely to cause confusion, in view of the additional descriptive language, since “[t]he addition of such relevant descriptive words reinforces rather than detracts from the conclusion that the Domain Name confusingly refers to the business of Complainant and would likely cause at least some customers to assume that the Domain Name is associated with Complainant.”)
Consumers are likely to be confused that the websites located at Respondent’s Infringing WEBROOT Domains are owned or affiliated with WEBROOT. Respondent’s Infringing WEBROOT Domains acknowledge that “[t]he services we offer are also available on the website of the brand owner” or “Support for Webroot is available for free on webroot official site.” It naturally follows that consumers would associate a website located at Respondent’s Infringing WEBROOT Domains, which contain the WEBROOT mark and provides customer support services for Webroot products, with Webroot. Moreover, Respondent uses Webroot’s logos and graphics, rendering confusion more likely. See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (holding the content of a website may increase the likelihood of consumer confusion). The requirement of confusing similarity is met.
b. The Respondent Does Not Have Any Right or Legitimate Interest in Respondent’s Infringing WEBROOT Domains.
Respondent does not have any right or legitimate interest in Respondent’s Infringing WEBROOT Domains. The registration of a domain for the purpose of redirecting Internet users interested in another’s products and services is not a bona fide offering of goods pursuant to Policy ¶4(c)(i). Moreover, Respondent has no legitimate right to the name in that it has not received permission to use the mark pursuant to Policy ¶4(c)(ii). Furthermore, Respondent is not using the mark for legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because Respondent appears to be using Respondent’s Infringing WEBROOT Domains for a commercial purpose and Respondent’s disclaimer further indicates that Respondent does not have a legitimate interest in the domain.
1. Respondent has not used the Domain Names in Connection with a Bona Fide Offering of Goods or Services in that the Intent was to Cause Unsuspecting Consumers to Veer to Its Website and Away from Webroot’s Legitimate Site.
A respondent’s use of a domain name to trick consumers into visiting its website to offer competing products or services is not a bona fide offering of goods or services pursuant to Policy ¶(c)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i)). When a respondent offers the same services as complainant and uses complainant’s marks to divert customers to its website, there is no bona fide offering of services. Yahoo! Inc. v. Mac Patchers, Ravi Singh / Dayzed Pty Ltd, Ravi Singh, WIPO Case No. DAU2017-0008 (May 19, 2017)(offering support services on the website yahoosupportaustralia.com is not a legitimate use when “[i]nternet users visiting the site are likely to be misled into believing that it is operated by an Australian subsidiary or associate of the Complainant. Internet users visiting the website can see the list of services and the customer support telephone number, which is very prominently displayed, without ever seeing the disclaimers. Some users are likely to be misled, call the number and engage the services, including those which incur a charge”); Yahoo! Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Prakhar Rastogi / Rajveer Singh Chawla / Divya Taneja, WIPO Case No. D2016-1423 (“According to the evidence submitted by the Complainant the websites that resolved or still resolves from the disputed domain names offer support services in a manner that, in this Panel’s view, could suggest (incorrectly) that such were operated by an affiliate of the Complainant.”)
Respondent does not have a bona fide interest in the domain names pursuant to Policy ¶4(c)(i) in that its intent in registering the domain names was to divert traffic away from Webroot, not to legitimately use the name in connection with the sale of goods. Unsuspecting consumers attempting to visit Webroot’s website to access customer service support for WEBROOT computer security services and products are likely to inadvertently visit Respondent’s site because the domain names contain the WEBROOT marks along with the descriptive terms COM, SAFE, INSTALL, and SUPPORT. Further, upon arriving at Respondent’s website, those consumers are likely confused because Respondent uses logos similar to those used by Webroot. Customers visiting Respondent’s Infringing WEBROOT Domains are likely to think the services offered by Respondent originate from Webroot. Respondent, in turn, profited off the confusion.
The domain names are not connected to a bona fide offering of goods or services and is not a legitimate use.
2. Respondent has no Legitimate Right in the Domain Names Because Webroot has not Allowed Respondent to use the Name.
Respondent also has no legitimate rights pursuant to Policy ¶4(c)(ii) in that it is not commonly known by the mark and has not received Webroot’s permission to use the mark. Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name). A domain name registrant is presumed not to have a legitimate interest in a domain name where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; and (3) Respondent is not commonly known by the domain name. Policy ¶4(c)(ii); Gallup, Inc. v. Amish Country Store, FA96209 (Nat. Arb. Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark). Furthermore, it is “incumbent upon respondents to advance concrete evidence pursuant to Policy ¶4(a)(ii) rebutting the latter assertion because this information is uniquely within the knowledge and control of the respondent.” Wilson v. Whois Privacy Protection Service, Inc., FA0502000417186 (Nat. Arb Forum March 29, 2005).
Respondent does not have a legitimate interest in Respondent’s Infringing WEBROOT Domains. Webroot has not licensed its WEBROOT marks to Respondent. Webroot’s prior rights to the WEBROOT marks precede Respondent’s domain name registrations. Additionally, there is no evidence Respondent is commonly known by the name WEBROOT. Accordingly, Respondent’s Infringing WEBROOT Domains clearly do not refer to Respondent.
3. Respondent’s Disclaimer does not make Respondent’s use Legitimate
Respondent is also not using the domain names for a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because the Respondent is using Complainant’s marks to illegitimately divert Webroot’s customers. Este Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, September 25, 2000 (“Respondent has not denied, and cannot credibly deny, that its use of the domain names at issue was to attract internet users desirous of criticizing the Complainant or its products, and therefore likely divert them from legitimate sites authorized by Complainant. The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion”); Accord, Gallo v. Hanna Law Firm, Case No. D2000-0615; DFO, Inc. v. Christian Williams Case No. D2000-0181; Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. Case No. D2000-1698, January 25, 2001 (“But by the time consumers get to read the disclaimers, the domain name has already diverted them from the Complainant.”)
Respondent is not making a legitimate, non-commercial, or fair use of the domain names in that its purpose in registering and using the domain names is to divert Webroot’s customers to a competing website offering customer support. Users will not see the disclaimer on the Respondent’s Infringing WEBROOT Domains until after they have already been diverted from Webroot’s website to Respondent’s website. A customer is unlikely to see the disclaimer until he scrolls to the very bottom of Respondent’s Infringing WEBROOT Domains. At this point, Respondent has already been redirected to Respondent’s Infringing WEBROOT Domains. Disclaimers, such as used by Respondent, cannot cure “the initial and illegitimate diversion,” and do not support a legitimate interest by Respondent.
4. Respondent is likely using Respondent’s Infringing WEBROOT Domains for a Commercial Purpose
Finally, Respondent is not using Respondent’s Infringing WEBROOT Domains for a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii) because it is very likely that Respondent’s website is commercial in nature. Based on the content of the websites, it appears that Respondent is charging for its services. This is highlighted by Respondent’s inclusion of a “Refund Policy”. This use is clearly not non- commercial as it is in fact commercial, and does not support a legitimate interest.
c. The Domain Name Has Been Registered and Used in Bad Faith
Respondent’s registration of a domain name in association with Webroot’s WEBROOT Marks shows the registration was in bad faith. Respondent’s registration of a domain name with the constructive and actual knowledge of Webroot’s trademark rights in that name shows bad faith pursuant to Policy ¶4(b)(ii). Respondent’s pattern of registering WEBROOT variant domains further evidences bad faith under Policy ¶4(b)(ii). Respondent’s disclaimer indicates actual knowledge by Respondent of Webroot and Respondent’s use of Webroot’s logos indicates knowledge of the WEBROOT Marks. Because Respondent’s website associated with WEBROOTCOMSAFE.ORG offers competing services Respondent’s registration disrupted the business of a competitor in bad faith pursuant to Policy ¶4(b)(iii). Respondent’s intentional attempt to attract Internet users to its website by using a name that is confusingly similar to Webroot’s WEBROOT Marks and to then attempt to sell services to these users based on the underlying confusion is also in violation of Policy ¶4(b)(iv). Moreover, the deactivation of Respondent’s WEBROOT-COM-SAFE.NET, WEBROOTCOM-SAFE.ORG, WEBROOT-SUPPORT.ORG, and WEB--ROOT.ORG websites does not prevent a finding of bad faith, and neither does Respondent’s disclaimer.
1. Respondent Registered the Domain Name in Bad Faith Knowing of Webroot’s Trademark Rights in the WEBROOT marks.
Respondent’s registration of Respondent’s Infringing WEBROOT Domains was in bad faith pursuant to Policy ¶4(b)(ii) because at the time the name was registered, Respondent was on notice and knew of Webroot’s rights. “[T]here is a legal presumption of bad faith when [a] Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.” Digi Int’l v. DDI Sys., FA124506 (Nat. Arb. Forum Oct 24, 2002); see also Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). Regardless of actual knowledge, a respondent should have conducted a trademark search prior to the registration of the domain names. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case D2001-1319 (Feb 1, 2002) (holding the failure to conduct a trademark search considered an element of bad faith).
Respondent was at least on constructive notice of Webroot’s trademark rights in its WEBROOT Marks prior to the registration of the domain names. Webroot’s WEBROOT Marks were registered with the United States Trademark Office and in many countries around the world at the time the domain names were registered. A search for “WEBROOT” on the site prior to registration of Respondent’s Infringing WEBROOT Domains would have revealed Webroot’s trademark rights.
Respondent clearly also had actual knowledge of Webroot and its WEBROOT Marks. Respondent incorporates Webroot’s WEBROOT marks, as well as its logos and graphics. This strongly indicates that Respondent knew of Webroot. Respondent’s Infringing WEBROOT Domains includes the descriptive terms COM, SAFE, INSTALL, and SUPPORT. These terms stand for “computer safety,” and computer safety, support, and installation services are offered by Webroot. This also clearly indicates that Respondent knew of Webroot and its marks. Allstate Insurance Company v. Transure Enterprise Ltd, WIPO Case No. D2010-0056 (March 11, 2010) (Registration of allstatecustomerservice.com in bad faith as “the evidence in this case suggests that the Respondent knew or must have known about the Complainant's trademarks when registering the disputed domain names, especially due to the fact that two of the domain names consist of the Complainant's ALLSTATE trademark with the addition of the albeit misspelled generic term “insurance”, as the Complainant is an insurance company providing insurance services.”) Moreover, Respondent’s disclaimer strongly indicates actual knowledge. On that basis alone, Respondent’s registration of a confusingly similar domain names shows bad faith.
2. Respondent Acted in Bad Faith by Intentionally Attempting to Attract Internet Users to Its Website for Commercial Gain by Creating a Likelihood of Confusion with the WEBROOT marks.
Bad faith intent pursuant to Policy ¶4(b)(iv) is also shown from Respondent’s choosing to use a designation that it knows to be similar to another’s registered trademark in order to attract consumers to its website. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). This is especially true when the Respondent offers competing customer support services in association with Complainant’s marks. Yahoo! Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Prakhar Rastogi / Rajveer Singh Chawla / Divya Taneja, WIPO Case No. D2016- 1423 (September 6, 2016) (“[I]n this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy paragraph 4(b)(iv) in view of the reproduction of the YAHOO! trademark, as well as the offer of confusingly similar support services, on the websites that resolved and still resolves from the disputed domain names.”)
Bad faith is shown because Respondent registered and used the domain names in order to trade on Webroot’s goodwill associated with its WEBROOT marks by offering the same services that Webroot offers on a competing website. Respondent, by diverting customers from Webroot, is disrupting the business of a competitor. It also appears that Respondent financially benefits from provision of its services as these appear to be fee based. Respondent’s use of the WEBROOT marks, logos, and graphics, in association with services identical to those offered by Webroot all play off and magnify the confusion created by Respondent.
Respondent’s bad faith is not cured by deactivating its websites under the doctrine of passive holding. Part and parcel with the doctrine of passive holding is the “implausibility of any good faith use to which the domain name may be put.” (paragraph 3.3 of the WIPO Jurisprudential Overview 3.0; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Respondent’s use of Webroot’s WEBROOT marks to attract consumers to its website demonstrates Respondent’s bad faith.
3. Respondent’s Pattern of Conduct Demonstrates Bad Faith
Respondent has registered at least seven domains that include the WEBROOT Marks and offer or have offered technical support services for Webroot products. One of these domains, WEBROOTCOMSAFE.ORG, was previously found to be registered and bad faith and was likewise transferred to Complainant. See Webroot Inc. v. Chandresh singh, FA1710001756269, November 28, 2017. Respondent’s pattern of conduct clearly evidences bad faith on behalf of Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 claims rights in the WEBROOT mark based upon its registration of the mark with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,405,273, registered November 21, 2000). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant’s registration of the WEBROOT mark with the USPTO is sufficient to establish rights in the mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <web--root.org> and <web-root.org> domain names are confusingly similar to Complainant’s mark because each merely appends the gTLD “.org” to a hyphenated version of Complainant’s mark. Respondent’s <webroot-support.org>, <webrootcom-safe.org>, <webroot-com-safe.net> and <installwebroot.org> domain names are confusingly similar to Complainant’s WEBROOT mark because each adds a generic term to the mark, and some add a hyphen. The addition of descriptive or generic terms, or hyphens are insufficient to differentiate a disputed domain name from a mark. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶4(a)(i)); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark). Respondent merely added descriptive terms (install, support, and safe), hyphens, and the “.org” and “.net” gTLDs to Complainant’s WEBROOT mark to create the domain names at issue. Respondent’s <installwebroot.org>, <web--root.org>, <web-root.org>, <webroot-support.org>, <webrootcom-safe.org>, and <webroot-com-safe.net> domain names are confusingly similar to the WEBROOT mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent has no rights or legitimate interests in the <installwebroot.org>, <web--root.org>, <web-root.org>, <webroot-support.org>, <webrootcom-safe.org>, and <webroot-com-safe.net> domain names. Respondent is not authorized or licensed to use Complainant’s WEBROOT mark, nor is it commonly known by the disputed domain names. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain names. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS information of record identifies Respondent as “Polishsys Technologies / Polishsys Technologies” for the <web--root.org> domain name, “chitranshu singh/ polishsys technologies pvt ltd” for the <installwebroot.org> and <webroot-support.org> domain names, “Polishsys Technologies / Technical support” for the <web-root.org> domain name, and “chitranshu singh / employee” for the <webroot-com-safe.net> and <webrootcom-safe.org> domain names. No information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. Respondent has not been commonly known by the disputed domain names under Policy ¶4(c)(ii).
Complainant claims Respondent lack of rights or legitimate interests in the disputed domain names is demonstrated by its failure to use the domain names in connection with a bona fide offering of goods and services or for a legitimate non-commercial or fair use under Policy ¶4(c)(i) or (iii). Complainant claims Respondent uses the domain names in an attempt to pass off as Complainant in furtherance of its unauthorized, commercial customer service for Complainant’s products; Complainant further contends this use is in direct competition with its services. Neither attempts to pass off as a complainant nor the offering of competing services are indicative of rights and legitimate interests per Policy ¶¶4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”); see also Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”). Complainant provides screenshots of the <installwebroot.org>, <webroot-com-safe.net>, <webrootcom-safe.org>, and <web-root.org> all of which claim to be offering customer support for Complainant’s services. The website for these domain names seem to have changed after the Complaint was filed. installwebroot.org and web-root.org resolve to nonsensical websites (clearly in an attempt to avoid this Proceeding). webroot-com-safe.net and web--root.org do not resolve to anything. Now only <webrootcom-safe.org> offers services. Respondent failed to use the <installwebroot.org>, <web--root.org>, <webroot-support.org>, <web-root.org>, and <webroot-com-safe.net> domain names for a legitimate purpose under Policy ¶¶ 4(c)(i) or (iii).
The next question is whether or not <webrootcom-safe.org> makes a legitimate noncommercial or fair use of the domain name. The test for this appears in the well-known case Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). This offering must meet the following requirements:
• Respondent must actually be offering the services at issue; AND
• Respondent must use the site to sell only the trademarked goods; AND
• The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; AND
• The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. [emphasis added]
Respondent is truly offering support services for Complainant’s product. Respondent charges for those services, while Complainant offers similar services for free. This Panel does not know why a customer would chose to pay for service when a similar service is offered for free. However, that is the customer’s choice. Respondent’s use of Complainant’s marks is within the realm of fair use because Respondent provides support services from Complainant’s products (and is not offering support for other products on at this domain name).
The Panel finds Policy ¶4(a)(ii) satisfied, except for <webrootcom-safe.org>.
Complainant claims Respondent’s bad faith is indicated by its registration of multiple domain names – all incorporating Complainant’s WEBROOT mark. This Panel routinely quotes Policy ¶4(b)(ii), which reads: “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct;…” Complainant reflects its mark in the <webroot.com> domain name. Therefore, this Panel will not find bad faith on this ground because Complainant is not prevented from reflecting its mark in a domain name.
Complainant claims Respondent registered the domain names for the purpose of disrupting Complainant’s business. Using a domain name to disrupt a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (finding that the respondent’s use of the disputed domain name to offer competing loan services disrupts the complainant’s business under Policy ¶4(b)(iii)). This is true except for the <webrootcom-safe.org> domain name. This domain name reflects Respondent’s real business, which is a support service Respondent provides for Complainant’s customers. Respondent does not claim to be Complainant because the web site opens with “Antivirus and cyber security products from this brand are easy to use and install…” [emphasis added] Once again, Respondent is not passing itself off as Complainant with this opening paragraph and the disclaimer further on down the website. Respondent registered and used the <installwebroot.org>, <web--root.org>, <webroot-support.org>, <web-root.org>, and <webroot-com-safe.net> domain names in bad faith pursuant to Policy ¶4(b)(iii). Respondent did not register and use the <webrootcom-safe.org> domain name in bad faith under Policy ¶4(b)(iii).
Respondent’s failure to use the <webroot-com-safe.net>and <web--root.org> domain names is evidence of its bad faith. “Evidence of nonuse of a domain name for a period of time demonstrates use of the domain name in bad faith.” Pueblo Int’l, Inc. v. xtra-Net Internet Service GmbH, NAF Case No. 94975 (Forum July 17, 2000) and Paisley Park Enterprises v. James Lawson, Claim Number: FA0412000384834 (Forum February 1, 2005).
Complainant claims Respondent’s bad faith is evidenced by Respondent’s use of the disputed domain names to create confusion with Complainant’s mark for commercial gain. Use of a confusingly similar domain name to direct Internet users to a website which competes with a complainant’s business may be evidence of bad faith under Policy ¶4(b)(iv). See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶4(b)(iv).”). The Panel finds Respondent has registered and used the <installwebroot.org>, <web--root.org>, <webroot-support.org>, <web-root.org>, and <webroot-com-safe.net> domain names in bad faith under Policy ¶4(b)(iv). Respondent did not register and use the <webrootcom-safe.org> domain name in bad faith under Policy ¶ 4(b)(iv)
The Panel finds Policy ¶4(a)(iii) satisfied, except for <webrootcom-safe.org>.
Having established all three elements required under the ICANN Policy for only some of the disputed domain names, the Panel concludes relief shall be GRANTED in part and DENIED in part.
Accordingly, it is Ordered the <installwebroot.org>, <web--root.org>, <web-root.org>, <webroot-support.org>,and <webroot-com-safe.net> domain names be TRANSFERRED from Respondent to Complainant.
Accordingly, it is Ordered the <webrootcom-safe.org> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, June 22, 2018
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