Bitwarden, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2108001959541
Complainant is Bitwarden, Inc. (“Complainant”), represented by Christine B. Redfield of Redfield IP PC, California, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitwraden.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2021; the Forum received payment on August 13, 2021.
On August 16, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bitwraden.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 August 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 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@bitwraden.com. Also on August 18, 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 September 13, 2021, 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. 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
The Complainant operates a password management and security software company. Complainant owns rights in the BITWARDEN trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 5,580,631, registered Oct. 9, 2018). Respondent’s <bitwraden.com> domain name is confusingly similar to Complainant’s BITWARDEN trademark as it contains a misspelling of Complainant’s trademark – the transposition of the letters “wa.”
Respondent lacks rights and legitimate interests in the <bitwraden.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the BITWARDEN trademark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to distribute malware to Internet users’ devices.
Respondent registered and uses the <bitwraden.com> domain name in bad faith. Respondent has a history of bad faith registration. Respondent also disrupts Complainant’s business and attempts to attract commercial gain by creating a likelihood of confusion as to the sponsorship of the disputed domain, and uses the disputed domain name to distribute malware to Internet users’ devices. Respondent also engaged in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 5,580,631 BITWARDEN (word), registered October 9, 2018 for goods in class 9; and
No. 6,277,472 BITWARDEN (word), registered December 22, 2020 for goods and services in classes 9 and 42.
The Complainant is also the owner of the International Trademark Registration No. IR1563326 BITWARDEN (word), registered August 20, 2020, for goods and services in classes 9 and 42, and designating European Union, United Kingdom and Japan.
The disputed domain name was registered on February 19, 2021.
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 Complainant asserts rights in the BITWARDEN trademark based on registration of the trademark with the USPTO (e.g., Reg. 5,580,631, registered Oct. 9, 2018). Registration of a trademark with the USPTO is sufficient to establish rights in that trademark. 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).”). The Panel therefore find that Complainant has established rights in the BITWARDEN trademark for the purposes of Policy ¶ 4(a)(i).
The Complainant argues that Respondent’s <bitwraden.com> domain name is confusingly similar to Complainant’s BITWARDEN trademark as it contains a misspelling of the trademark – the transposition of the letters “wa.” An obvious transposition of two letters in a disputed domain name may not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) (finding confusing similarity while Respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in crafting the <reatilmenot.com> domain name.). Thus, the Panel find that the disputed domain name is confusingly similar to Complainant’s BITWARDEN trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <bitwraden.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the BITWARDEN trademark. When response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record identifies “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant of the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the <bitwraden.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but instead uses the domain name in furtherance of malware distribution. Such use cannot amount to either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”).
Here, Complainant provides screenshots showing the disputed domain name redirect visitors to a third party website and installing malware on the computers of unsuspecting visitors to the website under the guise of performing a “standard security check” and offering a “safer web search experience.” Thus, the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <bitwraden.com> domain name in bad faith because Respondent has a history of bad faith registration. A respondent’s prior adverse UDRP history can evidence bad faith per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants. Here, Complainant provides a screenshot showing Respondent was previously involved in the UDRP dispute over the <bitwardent.com>, in which the Panel found Respondent was engaged in a malware scheme. Based on the information provided by the Complainant, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant also argues Respondent registered and uses the <bitwraden.com> domain name in bad faith because Respondent uses the disputed domain name to disrupt Complainant’s business and attract Internet users for commercial gain. Use of a domain name to attract users to a respondent’s website where it disseminates malware by creating confusion as to the websites affiliation with a complainant may well be considered evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)).
Here, the disputed domain name is nearly identical to Complainant’s trademark, and directs users to Respondent’s website where Internet users may inadvertently install malware onto their devices, which may lead to commercial gain for Respondent. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also argues that Respondent registered the <bitwraden.com> domain name with intent to distribute malware. Previous Panels have held that malware distribution displays bad faith under Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)”).
Here, as noted above, the Complainant provides screenshots of the disputed domain as evidence of Respondent’s attempts to distribute malware. The Panel therefore finds bad faith under Policy ¶ 4(a)(iii).
Furthermore, Complainant maintains that the <bitwraden.com> domain name constitutes typosquatting. Typosquatting, or introducing typographical errors to a domain name, may display relevant bad faith under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”).
Here, Complainant argues that Respondent engaged in typosquatting as the disputed domain name contains a misspelling of Complainant’s trademark – the transposition of the letters “wa.” The Panel agrees with Complainant’s conclusion, and finds bad faith under 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 <bitwraden.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: September 27, 2021
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