Symantec Corporation v. Domain Admin
Claim Number: FA1408001574921
Complainant is Symantec Corporation (“Complainant”), represented by Linda M. Goldman of Fenwick & West LLP, California, USA. Respondent is Domain Admin (“Respondent”),Kyrgyzstan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nortonantivirus.com>, registered with CSL Computer Service Langenbach GmbH d/b/a joker.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2014; the National Arbitration Forum received payment on August 14, 2014.
On August 14, 2014, CSL Computer Service Langenbach GmbH d/b/a joker.com confirmed by e-mail to the National Arbitration Forum that the <nortonantivirus.com> domain name is registered with CSL Computer Service Langenbach GmbH d/b/a joker.com and that Respondent is the current registrant of the name. CSL Computer Service Langenbach GmbH d/b/a joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH d/b/a joker.com 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 August 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@nortonantivirus.com.
Also on August 15, 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 September 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
a. Complainant’s mark:
i. Symantec has used its NORTON and NORTON-based marks and logos internationally in connection with its software products and services since 1982.
ii. One of Symantec’s most prominent marks is NORTON ANTIVIRUS, which has been used since at least as early as 1991.
iii. Complainant owns the NORTON ANTIVIRUS mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,758,084, registered Mar. 18, 1992).
iv. Complainant operates online through <symantec.com> and <norton.com>, which offer country-specific NORTON websites for about 50 countries.
b. Respondent’s infringing activities:
i. Policy ¶ 4(a)(i)
1. The <nortonantivirus.com> domain name is identical to Complainant’s NORTON ANTIVIRUS mark, except for removing the space and adding a generic top-level domain.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent has no legitimate relationship to Complainant giving rise to any license, permission, or authorization for use of the Domain Name.
3. Respondent is not commonly known by the name or nickname of the disputed domain name, or any name containing the NORTON marks, and owns no relevant trademark applications or registrations for them.
4. The disputed domain name resolves to a page featuring competing hyperlinks.
5. Respondent’s previous use of the website related to adult-oriented material is not a bona fide offering of goods or services.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s website currently serves as a parked page where confused internet users encounter various click through ads. The fact that some of these ads appear to be in direct competition with Complainant’s technology support services is evidence of bad faith.
2. Respondent previously used the disputed domain name in connection with pornographic material.
3. Due to the well-known status of the NORTON marks, it is extremely unlikely that Respondent created the disputed domain name independently.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Symantec Corporation of Mountain View, CA, USA, is the owner of numerous domestic and international registrations for the mark NORTON and related marks including NORTON ANTIVIRUS. Complainant has continuously used the latter mark since at least 1992 in connection with its provision of security, storage, and systems management solutions for computer and Internet software.
Respondent is Domain Admin of Bishkek, Kyrgyzstan. Respondent’s registrar’s address is listed as Germany. Respondent registered the disputed domain name on or about October 26, 2001.
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 states that it has used its NORTON and NORTON-based marks and logos internationally in connection with its various software products and services since 1982. Complainant claims to own the NORTON ANTIVIRUS mark through its trademark registration with the USPTO (Reg. No. 1,758,084, registered Mar. 18, 1992). Complainant argues that such registration is sufficient to establish rights in the NORTON ANTIVIRUS mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by prior UDRP decisions such as Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), where the Panel found that the Complainant had rights to the MILLER TIME mark through Complainant’s national trademark registrations. The Panel here finds that Complainant’s USPTO registration satisfies the requirements of Policy ¶ 4(a)(i).
Complainant also argues that the <nortonantivirus.com> domain name is identical to Complainant’s NORTON ANTIVIRUS mark with only the ommission of a space and the addition of a generic top-level domain “gTLD” (“.com”). Previous panels have found that a doman name differing by only the ommission of a space and the addition of a gTLD is still considered to be confusingly similar. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel here finds that Respondent’s <nortonantivirus.com> domain name is identical to Complainant’s NORTON ANTIVIRUS mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
It is Complainant’s position that Respondent lacks rights or legitimate interest in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the <nortonantivirus.com> domain name. The Panel notes that the WHOIS information identifies “Domain Admin” as the registrant of the disputed domain name. The Panel also notes that Respondent has failed to submit a response to refute any of Complainant’s contentions. Prior panels have found that the respondent lacks rights or legitimate interests in a domain name where there is no evidence in the record indicating the respondent is known by that name and did not submit a response to prove otherwise. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). The Panel here finds that Respondent is not commonly known by the <nortonantivirus.com> domain name for purposes of Policy ¶ 4(c)(ii).
Complainant argues that the disputed domain name resolves to feature links promoting products and services that compete with Complainant in the field of tech support services. Complainant notes that promoted competitors include McAfee, BullGuard, Trend Micro, Webroot, and ZoneAlarm. The Panel finds that the use of the disputed domain name to promote products and services in competition with Complainant does not amount to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Complainant further argues that Respondent previously used the <nortonantivirus.com> domain name to re-direct Internet users to websites containing adult-oriented content. Complainant argues that this is not a bona fide offering of goods or services or a noncommercial or fair use. Previous panels have agreed that such a use is in conflict with the UDRP Policy. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use). The Panel here finds that Respondent’s unauthorized use of the disputed domain name in connection with adult-oriented content does not constitute a bona fide offering of goods or services or a noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has violated Policy ¶ 4(b)(iv) by attempting to mislead Internet users as to Complainant’s affiliation with a webpage featuring click-through links from which Respondent profits. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel held, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” The Panel here finds that Respondent’s use is comparable at present, and therefore is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent’s prior use of the disputed domain name in connection with adult-oriented content misleads users as to Complainant’s affiliation with the disputed domain name and tarnishes the name of Complainant’s services. Complainant contends that such conduct warrants a finding of bad faith. Prior Panels have addressed this issue and found that such behavior evidenced bad faith. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith). This Panel here finds that Respondent’s previous use of the disputed domain name as described above is further evidence of bad faith.
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <nortonantivirus.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 25, 2014
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