Sophos Limited v. James Dean
Claim Number: FA2107001957589
Complainant is Sophos Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is James Dean (“Respondent”), Malta.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sophosupdates.com> and <sophos-updates.com>, (‘the Domain Names’) registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 30, 2021; the Forum received payment on July 30, 2021.
On July 30, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <sophosupdates.com> and <sophos-updates.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 August 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 2021 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@sophosupdates.com, postmaster@sophos-updates.com. Also on August 2, 2021, 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 August 25, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 Names be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark SOPHOS, registered, inter alia, in the UK for software related products and services since 1993.
The Domain Names registered in 2021 are confusingly similar to the Complainant’s mark containing it in its entirety and adding only the generic word ‘updates’ and the gTLD “.com” and in the case of <sophos-updates.com> a hyphen none of which prevents confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Names and is not authorized by the Complainant.
On or about May 7, 2021 the domain <sophosupdates.com> was configured to forward to the Complainant’s official website.
On or about May 7, 2021 the domain <sophos-updates.com> forwarded to a holding page featuring affiliate links to software security products and services that compete with the Complainant.
The Domain Names were flagged as malicious by www.virustotal.com, a service that enables users to upload software or enter Uniform Resource Locators (“URLS”) – i.e. web addresses and scan them for virus and malware threats through a broad array of antivirus products and online scan engines.
On May 7, 2021, the Complainant’s representative emailed the registrar and hosting provider regarding <sophosupdates.com> requesting that they suspend the domain and its hosting on the grounds of blatant infringement and suspected fraud. The hosting provider confirmed that the infringing links were no longer active on May 14, 2021.
On May 7, 2021, the Complainant’s representative emailed the domain parking service provider regarding <sophos-updates.com> requesting that the competing affiliate advertising links be removed. The domain parking service provider confirmed that the competing links had been removed on May 10, 2021.
These uses are confusing and are not a bona fide offering of goods or services. They are registration and use in opportunistic bad faith disrupting the Complainant’s business causing confusion amongst Internet users having been done in actual knowledge of the Complainant’s rights as evidenced by the pointing of <sophosupdates.com> to the Complainant’s own web site.
The Respondent has supplied false contact details to the WhoIs database which is also an indication of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark SOPHOS, registered, inter alia, in the UK for software related products and services since 1993.
The Domain Names were registered in 2021. <sophosupdates.com> has been pointed to the Complainant’s web site. <sophos-updates.com> has been pointed to competing pay per click links. The Respondent has submitted false contact details to the WhoIs database.
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”).
<sophosupdates.com> consists of the Complainant's SOPHOS mark (which is registered, inter alia, in the UK for software products and services with first use recorded as 1993), the generic word ‘updates’ and the gTLD “.com”.
<sophos-updates.com> consists of the Complainant's SOPHOS mark, a hyphen, the generic word ‘updates’ and the gTLD “.com”.
The addition of a generic term and a gTLD does not negate confusing similarity between a domain name and a trade mark contained within it. See Wiluna Holdings LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient to distinguish a disputed domain name from a mark under Policy 4(a)(i).). Nor does the addition of a hyphen. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).).
Accordingly, the Panel holds that the Domain Names are confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The use of the Domain Names is commercial and so cannot be legitimate non-commercial or fair use.
There is no actual evidence that the Domain Names have been used to attempt to defraud.
However, <sophosupdates.com> has been pointed to the Complainant’s own web site and <sophos-updates.com> has been pointed to competing commercial pay per click links. Directing Internet users to a complainant’s actual webpage and/or hosting third-party hyperlinks is not generally considered a bona fide offering of goods or services, or a legitimate non-commercial or fair use per Policy 4(c)(i) or (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent’s uses of the Domain Names are attempting to create confusion with the Complainant for the Respondent’s own gain and suggest bad faith under the Policy. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (finding, when a domain name is used to redirect to the complainant’s website, that “such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content,” which constitutes bad faith registration and use). Such uses are also disruptive and in competition with the Complainant’s interests. The fact that the Respondent has submitted false contact details to the WhoIs is also an indication of bad faith.
The fact that the Respondent has pointed one of the Domain Names to the Complainant’s own web site shows that the Respondent is aware of the Complainant and its rights and business.
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sophosupdates.com> and <sophos-updates.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 26, 2021
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