SecureWorks Corp. v. Zhichao Yang
Claim Number: FA1902001830554
Complainant is SecureWorks Corp. (“Complainant”), represented by Laura A. Kees of Womble Bond Dickinson (US) LLP, Georgia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <securewoks.com>, registered with NameSilo, LLC.
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 Forum electronically February 20, 2019; the Forum received payment February 20, 2019.
On February 21, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <securewoks.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC verified that Respondent is bound by the NameSilo, LLC 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 February 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2019, 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@securewoks.com. Also on February 26, 2019, 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 March 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant is a cyber security company serving 4,300 clients in more than 50 countries. Complainant has rights in the SECUREWORKS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,616,942, registered Sep. 10, 2002). See Compl. Ex. 7. Respondent’s <securewoks.com> domain name is confusingly similar to Complainant’s mark as it merely omits the letter “r” from Complainant’s mark and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights to or legitimate interests in the <securewoks.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services and does not make any legitimate noncommercial or fair use. Rather, Respondent uses the domain name to operate a link farm promoting the sale of cyber security services that seek to compete with Complainant’s own services. See Compl. Exs. 8-9.
Respondent registered and uses the <securewoks.com> domain name in bad faith. Respondent uses the domain name to commercially benefit from displaying links that resolve to competing cyber security third-party websites, which disrupts Complainant’s business. See Compl. Exs. 8-9. Further, Respondent registered the domain name using a privacy service. See Compl. Ex. 4. Finally, Respondent had constructive knowledge of Complainant’s trademarks prior to registration of the domain name.
B. Respondent
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the <securewoks.com> domain name August 15, 2018. See Compl. Ex. 4.
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or domain name containing it.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected 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(f), 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 (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 claims rights in the SECUREWORKS mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,616,942, registered Sep. 10, 2002). See Compl. Ex. 7. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant established rights in the SECUREWORKS mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <securewoks.com> domain name is confusingly similar to Complainant’s mark as it merely omits the letter “r” from Complainant’s mark and adds the “.com” gTLD. Such changes in a registered mark do not sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). The Panel therefore finds that the <securewoks.com> domain name is confusingly similar to the SECUREWORKS mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a confusingly similar domain name using Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights 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), then the burden of proof shifts to Respondent to show it does have such 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 a prima facie case showing that Respondent lacks rights and legitimate interests relative to the domain name at issue and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <securewoks.com> domain name, as Respondent is not commonly known by the disputed domain name and as Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. 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); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Zhichao Yang” as the registrant and Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and has not been given permission to use the SECUREWORKS mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <securewoks.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the domain name to operate a link farm promoting the sale of cyber security services that competes with Complainant’s own services. Using a domain name to display hyperlinks to services relating to a complainant generally does not amount to any bona fide offering of goods or services or any legitimate noncommercial or fair use. See Barclays PLC v. Antwan Barnes, FA 1806411 (Forum Oct. 20, 2018) (“Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the resolving webpage, which displays links such as “Information Security Solutions” and “Managed Security Services.” See Compl. Exs. 8-9. Accordingly, the Panel agrees and finds that Respondent’s use of the domain name to offer competing hyperlinks fails to confer rights and legitimate interests in the domain name for the purposes of Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the mark or domain name containing it; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant claims that Respondent uses the domain name to commercially benefit from displaying links that resolve to competing cyber security third-party websites, disrupting Complainant’s business. Using a confusingly similar domain name in a manner disruptive of a complainant’s business by trading upon the goodwill of a complainant for commercial gain can evidence bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, supports findings of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). As noted above, Complainant provides a screenshot of the resolving webpage, which displays links to such as “Information Security Solutions” and “Managed Security Services.” See Compl. Exs. 8-9. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Complainant argues that Respondent had constructive knowledge of Complainant’s SECUREWORKS mark at the time of registering the <securewoks.com> domain name. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge, however, the Panel finds that Respondent had actual knowledge of Complainant’s mark, which does support a finding of bad faith under the Policy. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends that Respondent’s knowledge can be inferred given Complainant’s prior trademark registrations. Further, a Panel may consider the use made of the mark. Therefore, this Panel finds that Respondent had actual knowledge of Complainant’s mark prior to registering the domain name, based on the nominal similarity to the mark and the use; and that Respondent acted in bad faith under 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 containing Complainant’s mark 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 <securewoks.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 29, 2019
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