Proofpoint, Inc. v. Michael Hansen / Investigatored
Claim Number: FA1712001763198
Complainant is Proofpoint, Inc. (“Complainant”), represented by Brett A. August of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois. Respondent is Michael Hansen / Investigatored (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <proofpoint.co>, registered with NameCheap, Inc.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2017; the Forum received payment on December 15, 2017.
On Dec 18, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <proofpoint.co> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 December 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 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@proofpoint.co. Also on December 22, 2017, 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.
A timely Response was received and determined to be complete on January 9, 2018.
On January 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global security and compliance company that provides cloud-based solutions to protect data and digital communications. Complainant has rights in the PROOFPOINT trademark based upon its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,988,946, registered Aug. 30, 2005).
The disputed domain name <proofpoint.co> is identical to Complainant’s PROOFPOINT trademark, as the domain name consists entirely of the trademark and the added “.co” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <proofpoint.co> domain name. Respondent is a former employee of Complainant and as of September 13, 2017, has not been affiliated with Complainant in any way. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the PROOFPOINT trademark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the name to host a website displaying pay-per-click links which include links to competitors of Complainant’s business.
Respondent registered and is using the <proofpoint.co> domain name in bad faith. Respondent’s use of the domain name to host pay-per-click links to Complainant’s competitors indicates its bad faith. Further, since Respondent is a former employee, it clearly had actual knowledge of Complainant and its rights in the PROOFPOINT trademark at the time it registered and subsequently used the domain name.
B. Respondent
Respondent claims it did not register the <proofpoint.co> domain name to infringe on any rights or interests of the Complainant. Respondent nonetheless yields use of the domain and asks the Panel to grant transfer of the domain to Complainant.
Respondent, however, rejects the assertions that it registered the <proofpoint.co> domain name in bad faith. The sponsored listings displayed on the resolving website are served automatically by a third party and Respondent does not have any relationship with any advertisers who may have displayed advertisements on the default parked page. Respondent has not received any financial gain due to the registration of the domain, and does not seek any.
The Panel finds that the Complainant has established trademark rights in the PROOFPOINT trademark, including:
- United States Patent and Trademark Office (“USPTO”) Trademark Registration No. 2988946 PROOFPOINT (fig), filed on July 22, 2003, and registered on August 30, 2005 for goods and services in classes 9 and 41
- European Union Trade Mark registration No. 015523343 PROOFPOINT (word), filed on June 10, 2016, and registered on October 13, 2016 for goods and services in classes 9 and 41
- Peoples Republic of China national Trademark Registration No 16441472 PROOFPOINT (word)
- Peoples Republic of China national Trademark Registration No 16441471 PROOFPOINT (word)
- Peoples Republic of China national Trademark Registration No 19677149 PROOFPOINT (word)
- Peoples Republic of China national Trademark Registration No 19677150 PROOFPOINT (word)
- Japan national Trademark Registration No5981445 PROOFPOINT (word)
- New Zealand national Trademark Registration No 1044624 PROOFPOINT (word).
The Respondent registered <proofpoint.co> on October 9, 2017.
According to Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), “a Panel shall 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 this case, the Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to the Complainant.
Therefore, under these special circumstances, the Panel decides to forego the traditional UDRP analysis and order an immediate transfer of the <proofpoint.co> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Giving the special circumstances in this case, the fact that Respondent has consented to the transfer of the disputed domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <proofpoint.co> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 24, 2018
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