Kaspersky Lab Zao v. Domain Name
Claim Number: FA1007001337363
Complainant is Kaspersky
Lab Zao (“Complainant”), represented by Maulin V. Shah, of UDRPro, LLC,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <kasperskey.com>, <kasparsky.com>, <kaspersy.com>, <kaspery.com>, <kaspesky.com>, and <kespersky.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2010.
On July 27, 2010, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <kasperskey.com>, <kasparsky.com>, <kaspersy.com>, <kaspery.com>, <kaspesky.com>, and <kespersky.com> domain names are registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 2010 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@kasperskey.com, postmaster@kasparsky.com, postmaster@kaspersy.com, postmaster@kaspery.com, postmaster@kaspesky.com, and postmaster@kespersky.com by e-mail. Also on August 5, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 a Written Notice, as defined in Rule 1. 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 makes the following assertions:
1. Respondent’s <kasperskey.com>, <kasparsky.com>, <kaspersy.com>, <kaspery.com>, <kaspesky.com>, and <kespersky.com> domain names are confusingly similar to Complainant’s KASPERSKY mark.
2. Respondent does not have any rights or legitimate interests in the <kasperskey.com>, <kasparsky.com>, <kaspersy.com>, <kaspery.com>, <kaspesky.com>, and <kespersky.com> domain names.
3. Respondent registered and used the <kasperskey.com>, <kasparsky.com>, <kaspersy.com>, <kaspery.com>, <kaspesky.com>, and <kespersky.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kaspersky Lab Zao, is a developer of anti-virus and anti-spam software for personal computers, as well as a provider of IT security solutions for protecting business and enterprise networks. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the KASPERSKY mark (e.g., Reg. No. 2,756,752 issued on August 26, 2003) as well as the Office of the European Union (“OHIM”) (e.g., Reg. No. 1,605,955 issued on April 26, 2002).
Respondent registered the <kasperskey.com>, <kasparsky.com>, <kaspersy.com>, <kaspery.com>, <kaspesky.com>, and <kespersky.com> domain names on March 19, 2003. The disputed domain names redirect Internet users to a part of Complainant’s official website.
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."
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.”).
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.
Complainant asserts rights in the KASPERSKY mark through its
registrations of the mark with the USPTO (e.g.,
Reg. No. 2,756,752 issued on August 26, 2003) as well as the OHIM (e.g., Reg. No. 1,605,955 issued on April
26, 2002). The Panel finds these
trademark registrations sufficiently prove Complainant’s rights in the
KASPERSKY mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”); see also Google, Inc. v. DktBot.org,
FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant
had established rights in the GOOGLE mark through its holding of numerous
trademark registrations around the world).
The Panel also finds Complainant need not hold registrations with the
trademark authority in the country in which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance
Complainant asserts Respondent’s disputed domain names are confusingly similar to its KASPERSKY mark. Complainant claims Respondent incorporates minor typographical errors of its mark in the disputed domain names. Complainant states Respondent: (1) adds the letter “e” to its mark in the <kasperskey.com> domain name; (2) substitutes the letter “e” in its mark with the letter “a” in the <kasparsky.com> domain name; (3) omits from its mark the second letter “k” in the <kaspersy.com> domain name; (4) omits the from its mark the letters “s” and “k” in the <kaspery.com> domain name; (5) omits the from its mark the letter “r” in the <kaspesky.com> domain name; and (6) substitutes the letter “e” in its mark for the letter “a” in the <kespersky.com> domain name. In addition, Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in each of the disputed domain names. The Panel holds that introducing typographical errors and affixing a gTLD to a mark do not distinguish a domain name from a mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s KASPERSKY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie case showing Respondent lacks rights and legitimate interests in the disputed domain names. The burden then shifts to Respondent to prove it has rights or legitimate interests. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent has failed to submit a Response, the Panel will evaluate the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
The WHOIS information lists “Domain Name” as the registrant of the disputed domain names, which the Panel finds is not similar to the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims Respondent’s disputed domain names redirect Internet users to a portion of Complainant’s official website. Complainant alleges Respondent engages in this behavior in order to receive affiliate fees from Complainant. The Panel finds Respondent’s diversion of Internet users to Complainant’s website, in violation of the terms of Complainant’s affiliate program, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Finally, Complainant contends Respondent’s use of the
disputed domain names constitutes typosquatting. The Panel finds that Respondent makes use of
common misspellings of Complainant’s KASPERSKY
mark and that this practice provides additional evidence that Respondent
lacks rights and legitimate interests pursuant to Policy ¶ 4 (a)(ii). See Microsoft Corp. v.
Domain Registration
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent has engaged in a pattern of preventing Complainant from reflecting its mark in a corresponding domain name. In Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002), the panel found bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name.” Likewise, the panel in Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004), stated:
It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.
The Panel finds that Respondent has engaged in a pattern through its registration of six domain names that are confusingly similar to Complainant’s mark. Furthermore, the Panel concludes that Respondent registered the disputed domain names in order to prevent Complainant from reflecting its mark in a corresponding domain name. Therefore, the Panel finds Respondent’s behavior qualifies as registration in bad faith under Policy ¶ 4(b)(ii).
In addition, Complainant argues that Respondent has
intentionally attempted to attract, for commercial gain, Internet users to its
website, by creating a likelihood of confusion with Complainant’s KASPERSKY mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s site. The Panel finds Respondent has registered
domain names incorporating misspelled versions of Complainant’s mark in an
attempt to profit through the receipt of affiliation fees. Consequently, the Panel finds Respondent’s
behavior qualifies as registration and use in bad faith pursuant to Policy ¶
4(b)(iv). See Sports
As previously discussed, Respondent has engaged in typosquatting. Therefore, the Panel finds Respondent’s disputed domain names represent bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <kasperskey.com>, <kasparsky.com>, <kaspersy.com>, <kaspery.com>, <kaspesky.com>, and <kespersky.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 14, 2010
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