Virsec Systems, Inc. v. chenchen
Claim Number: FA2201001979235
Complainant is Virsec Systems, Inc. (“Complainant”), represented by Patricia L. Cotton of Pillsbury Winthrop Shaw Pittman LLP, California, USA. Respondent is chenchen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <virsec.net>, registered with Dynadot8 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 5, 2022; the Forum received payment on January 5, 2022.
On January 12, 2022, Dynadot8 LLC confirmed by e-mail to the Forum that the <virsec.net> domain name is registered with Dynadot8 LLC and that Respondent is the current registrant of the name. Dynadot8 LLC has verified that Respondent is bound by the Dynadot8 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 January 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2022 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@virsec.net. Also on January 12, 2022, 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 February 6, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the VIRSEC trademark relying on its ownership of the United States trademark registration described below and use of the mark in its cyber security business.
Complainant refers to screen captures of its website that it hosts at <www.virsec.com> as evidence of its use of the mark and states that it was incorporated on June 15, 2005, currently employing approximately 200 people, operating from its headquarters in San Jose, California and having an overseas office in Bangalore, India.
Complainant alleges that the disputed domain name <virsec.net> is identical to its coined, federally registered, and well-known VIRSEC mark because it wholly incorporates the mark in its entirety and with the mere addition of the generic Top Level Domain (“gTLD”) extension <.net>. See, Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”)
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence that Respondent is commonly known by the name “Virsec,” which name does not appear anywhere on Respondent’s website other than in the website address.
Also, the pertinent Whois information identifies the registrant of the disputed domain name as “Super Privacy Service Ltd. c/o Dynadot” which name does not resemble the term “Virsec”.
Complainant adds that Respondent is not an authorized dealer, distributor, or licensee of Complainant, and does not have Complainant’s permission to use the VIRSEC mark.
In addition, Complainant refers to screenshots of the website to which the disputed domain name resolves, captured on November 17, 2021 and January 5, 2022, which are exhibited in an annex to the Complaint, which show that Respondent is using the disputed domain name as the address of a website that displays sexually explicit photographs and videos for financial gain.
Complainant argues that such use by Respondent of the disputed domain name which incorporates Complainant’s trademark as the address of a website that displays pornographic material mistakenly and confusingly diverts traffic from Complainant’s website at <www.virsec.com>, suggests an improper association with Complainant, and tarnishes Complainant’s VIRSEC mark.
Complainant contends that such use therefore does not constitute a legitimate or fair use or a “bona fide” offering of goods or services. See, Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA1730673 (Forum June 1, 2017) (holding that “Respondent is not using the disputed domain name for any bona fide offering of goods or services or a legitimate non-commercial fair use because Respondent uses the domain name to host a pornographic website.”).
Complainant then alleges that the disputed domain name was registered and is being used in bad faith.
Complainant then alleges that the disputed domain name was registered and is being used in bad faith, submitting that the disputed domain name was registered on October 11, 2021, more than a decade after Complainant established valuable rights and goodwill in the distinctive VIRSEC mark.
Complainant contends that the term “virsec” is a coined word with no commonly understood meaning or dictionary definition and Respondent clearly registered the disputed domain name with actual knowledge of Complainant’s trademark rights.
Complainant adds that there is no evidence of any other reason for Respondent to have registered the disputed domain name <virsec.com> except in reference to Complainant and its VIRSEC mark, and therefore such registration of the disputed domain name was made in bad faith. See, Securian Financial Group, Inc. v. domain buy / buy domain FA 1766538 (Forum Feb. 16, 2018) (registrant of <securian.biz> domain name had actual knowledge of Complainant’s rights, in light of the coined nature of the SECURIAN mark that was entirely contained in the disputed domain name).
Complainant further argues that Respondent’s use of the disputed domain name as the address for the sexually explicit website, as documented in the screen captures in the annex to the Complaint, amounts to use in bad faith for the purposes of the Policy as it shows that Respondent is intentionally attempting to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with and tarnishing Complainant’s VIRSEC mark. Complainant contends that it is well settled that pornographic content on a respondent’s website may constitute a significant indicator of bad faith. See, Google Inc. v. Bassano, FA 232958 (Forum Mar. 8, 2004) (respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under the UDRP Policy).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of cyber security services for which it uses its United States registered trademark VIRSEC registration number 4,936, 662, registered on the Principal Register on April 12, 2016 for services in international class 42.
Complainant has an established Internet presence and is also the owner of the domain name <virsec.com>, registered on February 10, 2005, which is used as the address to host its official website.
The record shows that the disputed domain name was registered on October 11, 2021 and resolves to a website that displays sexually explicit photographs and videos.
There is no information available about Respondent, except for that provided in the Compliant, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name.
The Registrar identified Respondent as the registrant.
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”).
Complainant has provided convincing evidence that it has rights in the VIRSEC mark established by its ownership of the service mark registration described above and use of the mark in connection with its cyber security services, employing 200 people, operating from his headquarters in San Jose, California and an overseas office in Bangalore, India.
The disputed domain name <virsec.net> consists of Complainant’s mark in its entirety in combination with the generic Top Level Domain “(gTLD”) extension <.net>.
Complainant’s VIRSEC mark is the dominant and only distinctive element in the disputed domain name. In the context of this proceeding that gTLD extension <.net > would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name is identical to the VIRSEC mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging that:
· there is no evidence that Respondent is commonly known by the name “Virsec,”;
· “Virsec” does not appear anywhere on Respondent’s website other than in the disputed domain name itself;
· the pertinent Whois information identifies the Registrant of the disputed domain name as “Super Privacy Service Ltd. c/o Dynadot” which name does not resemble the “Virsec” term;
· Respondent is not an authorized dealer, distributor, or licensee of Complainant, and does not have Complainant’s permission to use the VIRSEC mark;
· Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or for any legitimate noncommercial or fair use, but rather to promote sexually explicit, adult-oriented content presumably for financial gain as illustrated in the screenshots of the website to which the disputed domain name resolves, captured on November 17, 2021 and January 5, 2022, which are exhibited in an annex to the Complaint.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name the burden of production shifts to the respondent to prove the existence of such rights or interests.
Respondent has failed to discharge the burden of production and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name and that Complainant has satisfied the second element of the test in Policy ¶ 4(a)(ii).
Complainant has provided uncontested evidence that it is a substantial corporation with an established Internet presence and operates internationally with over 200 employees.
When the disputed domain name was chosen and registered, is improbable that the registrant would have been unaware of Complainant and the website to which Complainant’s own domain name <virsec.com> resolved.
VIRSEC is a distinctive coined word and it is improbable that the registrant chose and registered the disputed domain name which is identical to Complainant’s trademark by coincidence.
On the balance of probabilities therefore, this Panel finds that the disputed domain name was registered in bad faith with knowledge of Complainant’s mark, rights and Internet presence, with the intention of targeting and taking predatory advantage of Complainant’s reputation and goodwill.
The uncontested evidence also shows that Respondent is using the disputed domain name, which is identical to Complainant’s VIRSEC mark, as the address for a website displaying sexually explicit content.
Given that there is no probable explanation for Respondent’s registration and use of the disputed domain name for any reason other than to create a misleading association with Complainant, its trademark and goodwill, this Panel finds that such activity on the part of Respondent amounts to use in bad faith for the purposes of the Policy because on the balance of probabilities Respondent is using the disputed domain name in an intentional attempt to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s VIRSEC mark.
The presentation of pornographic material in such circumstances must on the balance of probabilities tarnish and damage Complainant’s trademark which is used in its cyber security business.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <virsec.net> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: February 8, 2022
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