Docker, Inc. v. Admin DNS / Docker, Inc.
Claim Number: FA1906001846948
Complainant is Docker, Inc. (“Complainant”), represented by Christopher J. Palermo of Hickman Palermo Becker Bingham LLP, California, USA. Respondent is Admin DNS / Docker, Inc. (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mirrordocker.com> registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2019; the Forum received payment on June 7, 2019.
On June 10, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mirrordocker.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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@mirrordocker.com. Also on June 17, 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 July 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Docker, Inc. is the originator of the world’s most popular proprietary and open source software products. Complainant has rights in the DOCKER mark through its registration of the mark with the United States Patent and Trademark Office (“USTPO”) (e.g., Reg. No. 4,487,668 registered on February 25, 2014.) See Compl. Ex. 3. Respondent’s <mirrordocker.com> domain name is confusingly similar to Complainant’s DOCKER mark because it incorporates the mark in its entirety adding the descriptive term “mirror” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <mirrordocker.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name is an exact copy of Complainant’s own website. See Compl. Ex. 4. Respondent further uses the domain name purport to offer Complainant’s software products for sale. Additionally, Respondent attempts to confuse Internet users and divert them to the disputed domain name.
Respondent registered and uses the <mirrordocker.com> domain name in bad faith. Respondent attempts to attract Internet users, for commercial gain, by creating a likelihood of confusion and implying an affiliation between the disputed domain name and Complainant’s mark. Finally, Respondent has actual knowledge of Complainant’s rights in the DOCKER mark and attempts to trade on the reputation of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the originator of the world’s most popular proprietary and open source software products.
2. Complainant has established its trademark rights in the DOCKER mark through its registration of the mark with the United States Patent and Trademark Office (“USTPO”) (e.g., Reg. No. 4,487,668 registered on February 25, 2014.
3. Respondent registered the <mirrordocker.com> domain name on April 8, 2019.
4. Respondent has caused the domain name to resolve to a website that is an exact copy of Complainant’s own website. Respondent also uses the domain name to purport to offer Complainant’s software products for sale and it attempts to confuse Internet users and divert them to the disputed domain name.
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(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the DOCKER mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,487,668, registered Feb. 25, 2014). See Compl. Ex. 3. 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 Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established its trademark rights in the DOCKER mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DOCKER mark. Complainant argues that Respondent’s <mirrordocker.com> domain name is identical or confusingly similar to Complainant’s mark as it adds the descriptive term “mirror” which must be taken to mean, as the Complainant submits and the Panel agrees, a “copy of docker” or “similarity to docker”, suggesting that Respondent’s site is affiliated with or supported by Complainant, which is untrue. Moreover, the “.com” generic top-level domain gTLD is disregarded in the present exercise. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel therefore finds that the <mirrordocker.com> domain name is confusingly similar to the DOCKER mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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), then the burden shifts to Respondent to show it does have 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s DOCKER trademark and to use it in its domain name, adding the descriptive word “mirror” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <mirrordocker.com> domain name on April 8, 2019;
(c) Respondent has caused the domain name to resolve to a website that is an exact copy of Complainant’s own website. Respondent also uses the domain name to purport to offer Complainant’s software products for sale and it attempts to confuse Internet users and divert them to the disputed domain name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <mirrordocker.com> domain name because Respondent is not authorized or permitted to use Complainant’s DOCKER mark and is not commonly known by the disputed domain name. WHOIS information may be used to determine whether a respondent has rights or legitimate interest in a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Where a respondent appears to be commonly known by a disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of this identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The WHOIS information for the disputed domain name identifies the registrant as “Admin DNS/Docker, Inc.” but Respondent provides no affirmative evidence in support of this identity and no evidence in the record suggests Respondent is authorized to use the DOCKER mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <mirrordocker.com> domain name for a bona fide offering of goods or services as the website to which the disputed domain name resolves is an exact copy of Complainant’s website. Copying a complainant’s website to a disputed domain name may not be a bona fide offering of goods or services or legitimate noncommercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage as well as a screenshot of Complainant’s own website. Complainant argues that the <mirrordocker.com> domain name appears to feature an exact copy of Complainant’s own website. See Compl. Exs. 4 and 4A. The Panel agrees and finds that Respondent therefore has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent fails to use the <mirrordocker.com> domain name for a bona fide offering of goods or services as Respondent purports to offer Complainant’s software products for sell. Using a confusingly similar domain name that resolves in a webpage that directly competes with a complainant and/or offers complainant’s own services may fail to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use); see also Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage, which allows users to “Sign up for Docker Hub” or “Get Started.” See Compl. Ex. 4. As the Panel finds the evidence sufficient, the Panel finds that Respondent fails to make a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) or (iii);
(h) Complainant argues that Respondent fails to use the <mirrordocker.com> domain name for a legitimate noncommercial or fair use because Respondent attempts to confuse Internet users by diverting them to the disputed domain name. Using a complainant’s mark to divert Internet users to a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant argues that Respondent uses the disputed domain name to offer a website that is identical to Complainant’s own website. See Compl. Exs. 4 and 4A. As the Panel finds the evidence sufficient, the Panel finds that Respondent makes no legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent attracts Internet users to the website to which the <mirrordocker.com> domain name resolves by creating a likelihood of confusion and implying an affiliation with Complainant’s DOCKER mark. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). Complainant argues that Respondent acts in bad faith by featuring Complainant’s marks and website on the disputed domain name’s resolving webpage. The Panel recalls that Complainant provides screenshots of the disputed domain name’s resolving webpage as well as Complainant’s own website, which Complainant argues appear be identical. See Compl. Exs. 4 and 4A. The Panel agrees and therefore finds that that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the DOCKER mark at the time of registering the <mirrordocker.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Use of a disputed domain name by a respondent to pass itself off as a complainant can show a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration of the disputed domain name, thus constituting bad faith under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant contends that Respondent’s knowledge can be inferred given its use of the DOCKER mark in the domain name, and the similarity of the disputed domain name’s resolving webpage and Complainant’s own website. See Compl. Exs. 4 and 4A. Therefore, the Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the DOCKER mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mirrordocker.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 14, 2019
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