cPanel, L.L.C. v. Eurobia / Firas Faraji
Claim Number: FA1907001851194
Complainant is cPanel, L.L.C. (“Complainant”), represented by David Snead, Texas, USA. Respondent is Eurobia / Firas Faraji (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thefreecpanel.com>, registered with NameSilo, 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.
Aaron B Newell as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2019; the Forum received payment on July 8, 2019.
On July 8, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <thefreecpanel.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 July 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 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@thefreecpanel.com. Also on July 10, 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.
A timely Response was received and determined to be complete on July 30, 2019.
On August 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Aaron B Newell 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 the owner of numerous trade mark registrations for or containing the term CPANEL for web server configuration and management and uses the mark for these same services and has done so for over twenty years, investing over USD 12 million in the advertising, marketing and promotion of its CPANEL business over fourteen of these years and benefits from a substantial international reputation in its business under the CPANEL name.
The <thefreecpanel.com> domain name is virtually identical and/or confusingly similar to its CPANEL-formative trademark registrations.
The Respondent has no legitimate interest in the domain name. It has never authorized Respondent to use the CPANEL name, is not commonly known by the name CPANEL but rather trades as Eurobia, does not offer bona fide goods and services and is not using the Domain Names for a legitimate noncommercial or fair use purpose.
Respondent registered and is using <thefreecpanel.com> in bad faith. Respondent has used a replica of Complainant’s logo on the website that loads at the <thefreecpanel.com> domain name and is attempting to confuse customers and profit off the goodwill and resources that Complainant has invested in its business. Despite trading as “thefreecpanel.com” and Eurobia, Respondent uses simply “CPANEL” throughout its website. Respondent also uses CPANEL as a search keyword in order to optimize traffic to its website, uses its Twitter account in a way that creates the appearance of commercial ties between it and Complainant, and provides its services in a way that could give the appearance of commercial ties between it and Complainant.
Complainant learned in early April 2019 that Respondent used and registered the <thefreecpanel.com> domain name, wrote to the Respondent within approximately 48 hours of doing so and did not receive a satisfactory response.
B. Respondent
Respondent asserts that Forum does not “have the jurisdiction” to adjudicate the matter because it is not an approved dispute resolution provider for domain name disputes and Respondent never agreed “to the jurisdiction of Forum”.
The domain name is not similar or identical to the Complainant’s trademark registrations. “C PANEL” is a generic term meaning “control panel”.
The Respondent has a legitimate interest in the domain name. The domain name was registered in 2013 and the Complainant has not, until now, complained about the domain name. Respondent uses the domain name for a bona fide offering of hosting services and is commonly known by the domain name.
Respondent did not register and use the domain name in bad faith. Respondent did not register the domain name for the purpose of “selling, renting, or otherwise transferring the domain name registration” to the Complainant or any of its competitors. Respondent has never attempted to prevent Complainant from reflecting its name in a domain name. Respondent and Complainant are not competitors and Respondent has not attempted to solicit Complainant’s customers or to confuse or mislead Complainant’s customers. Respondent carries out business at the domain name. Respondent’s conduct is lawful because it obtained a cpanel software license from the Complainant. Respondent is the director of England and Wales registered company no 11958882 Thefreecpanel Ltd, incorporated 23 April 2019.
C. Additional Submissions
No additional submissions were filed.
(1) Forum has jurisdiction to decide the Complaint;
(2) the subject domain name is confusingly similar to a trademark in which Complainant has rights;
(3) Respondent has no rights to or legitimate interests in respect of the domain name; and
(4) the disputed domain name was registered and is being used by Respondent in bad faith.
The Respondent briefly asserted (without supporting authority) that Forum does not have jurisdiction to decide the dispute. Domain name registrants agree to arbitration jurisdiction, including the Forum, at the time they register a domain name. See Eddie Bauer, Inc. v. Zuccarini, D2001-0224 (WIPO Apr. 26, 2001) (“The Policy and Rules referred to comprise terms of domain name services agreements which Respondent accepted and agreed to be bound by when he registered the domain names in questions. A registrant in Respondent’s position has full access to judicial remedies in the event he is dissatisfied with a Panel decision.”).
Forum has jurisdiction to decide the dispute.
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.
The domain name is confusingly similar to the Complainant’s prima facie valid CPANEL trademark registrations. The Complainant’s trademark CPANEL is wholly contained in the domain name. The only additional matter is “thefree” which does not distinguish the domain but rather merely provides commercial information about CPANEL.
Respondent alleges that “CPANEL” is generic and descriptive but provides no evidence to support this. There is sufficient evidence submitted by both parties that leads one to conclude that CPANEL does, in the field of hosting, distinguish Complainant’s activities from those of other businesses.
Further, and in any event, Respondent himself used CPANEL in a commercial context to refer to and indeed promote Complainant’s activities, tacitly acknowledging that CPANEL distinguishes the Complainant’s business from that of others and has the capacity to function as a trademark.
Complainant alleges that it has not at any time authorized Respondent to use the CPANEL name. Respondent appears to have had knowledge of Complainant’s CPANEL business at all material times and to have registered the domain name as a reference to this business and was not, prior to this time, commonly known by the name CPANEL but rather traded as, and continues to trade as, EUROBIA (indeed the support e-mail address for the services promoted by Respondent at <thefreecpanel.com> is support@eurobia.co.uk).
I accept that Complainant has made a prima facie case that Respondent does not have rights or a legitimate interest in the domain name. The burden therefore shifts to the Respondent to demonstrate otherwise.
Paragraph 4(c) of the Policy outlines how a UDRP Respondent might establish rights or a legitimate interest in a domain name. It provides as follows:
When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Respondent alleges that he has a license to use Complainant’s CPANEL software. The implication is that this authorizes Respondent to use the domain name and, accordingly, it has “rights” in the domain name in accordance with the Policy.
The terms of the license are however not entered into evidence. There is only a screenshot of a website dashboard that suggests that a license is active. This seems to be a generic license issued by a third party reseller or distributor in respect of use of the Complainant’s CPANEL software.
A license to use or even resell third party software does not inherently entitle the licensee to use the name of that software in a domain name. While the Respondent could have provided the specific terms of the license in its evidence, it did not do so and therefore has not rebutted the Complainant’s assertion that it has not authorized the Respondent to use the CPANEL trademark.
Respondent appears to have been offering hosting services at a website that loads at the domain name. In this regard, the Panel finds the reasoning in the well-known Oki Data decision (D2001-0903, WIPO, November 6, 2001) to be helpful.
Complainant’s CPANEL product is described as an easy-to-use platform for managing a hosting service. Respondent offers hosting services and alleges that it offers CPANEL as a part of these services.
In OKI DATA it was held that resellers, distributors or service providers using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services may be making bona fide offering of goods or services and thus have legitimate rights in the domain name incorporating the trademark if certain cumulative requirements are met. The requirements are:
i) the respondent must actually be offering the goods and services at issue;
ii) the respondent must use the site to sell only the trademarked goods;
iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder;
iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
Here, the Respondent’s website clearly purports to offer hosting services featuring CPANEL. It does not simply offer only CPANEL, nor does it simply offer hosting services that incorporate CPANEL. The Respondent also clearly offers other services including SEO optimization, SSL certificates and other “security packages”. The Respondent therefore does not meet Oki Data criteria ii).
While this by itself is enough to disqualify Respondent from taking advantage of Policy 4(c)(i), I should note that Respondent also does not meet the third Oki Data criteria, given that the relationship between the businesses (or lack thereof) is not made clear on the website. Rather, the website in multiple places uses a logo comprising a stylized CP that resembles the Complainant’s logo, which is also a registered trademark. In the circumstances this does the opposite of clarifying the nature of the relationship between the parties.
It should also be noted that Respondent asserts that it owns a registered company Thefreecpanel Ltd. While this possibly could indicate that Respondent is “commonly known” by “Thefreecpanel” and/or has “rights” in the domain name, its company was incorporated 23 April 2019, after Respondent was put on notice by Complainant of the Complainant’s objections to the Respondent’s website and domain name. Accordingly, little weight can be given to the name of the registered company. Further, there is no indication that the company itself is affiliated with the services offered at the domain name in any event. Rather, the Respondent’s website features a copyright notice “Copyright 2012 - 2019 One of Eurobia LTD Projects…Powered by Firas Faraji.”
Finally, Respondent cannot simultaneously argue that it is both running a business at the domain name and making non-commercial and/or fair use of the domain name, particularly where Respondent does not meet Oki Data criteria iii).
On this basis, I find that the Respondent has not established that it has rights or legitimate interests in the domain name and that Complainant has established the second element of the Policy.
Based on the facts and circumstances, I am persuaded that Respondent knew of Complainant’s trademark at the time of registering the domain name. Respondent and Complainant both are involved in the business of hosting services.
Complainant had been in business under the CPANEL name for approximately 14 years at the time of registration of the domain name, and Respondent has at various times directly referred to the Complainant and variously replicated its logos on its website.
The Respondent appears to be using the domain name to attract customers to its hosting and related services. In other words, Respondent is using the domain name to attract for commercial gain Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Respondent then offers those customers other services beyond CPANEL-related services. This constitutes bad faith use as recognized under the Policy and there is nothing in the evidence to indicate that this was not the purpose for which the domain name was registered.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thefreecpanel.com> domain name be TRANSFERRED from Respondent to Complainant.
Aaron B. Newell Panelist
Dated: 16 August 2019
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