James Linlor v. Host Master / McAfee LLC
Claim Number: FA2202001985124
Complainant is James Linlor (“Complainant”), Nevada, USA. Respondent is Host Master / McAfee LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cyberguard.com>, registered with CSC Corporate Domains, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2022; the Forum received payment on February 21, 2022.
On February 22, 2022, CSC Corporate Domains, Inc. confirmed by e-mail to the Forum that the <cyberguard.com> domain name is registered with CSC Corporate Domains, Inc. and that Respondent is the current registrant of the name. CSC Corporate Domains, Inc. has verified that Respondent is bound by the CSC Corporate Domains, 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 February 23, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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 firstname.lastname@example.org. Also on February 23, 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 March 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
From its beginnings in 2018, Complainant has used the CYBERGUARD mark to market computer programming and computer security consultancy services.
Complainant holds a registration for the CYBERGUARD service mark, which is on file with the United States Patent and Trademark Office (USPTO) as Registry No. 6,224,790, registered December 22, 2020, on the basis of an application for registration filed on October 11, 2018, and claiming a first use in commerce of October 1, 2018.
The domain name <cyberguard.com> was first registered on January 6, 1998.
Respondent acquired and registered the domain name in its own name in 2008.
The domain name is substantively identical to Complainant’s CYBERGUARD service mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed Respondent to use Complainant’s CYBERGUARD service mark.
Respondent is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Instead, Respondent is not making any active use of the domain name.
Respondent has neither rights to nor legitimate interests in the domain name.
Respondent both registered and now uses the domain name in bad faith.
However, the Complaint recites that “there is no direct evidence of initial bad faith in registration in 2008 or prior,….”
The Complaint further lays out arguments arising under the federal Anticyber-squatting Consumer Protection Act (ACPA) (15 U.S.C. § 1125(d)). These arguments are inapposite to a proceeding conducted under the Policy, which permits the Panel to consider and decide only claims of abusive cybersquatting as specifically contemplated by its terms. See, for example, Abbott Labs. v. Patel, FA 740337 (Forum August 15, 2006) (finding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a UDRP proceeding because the Policy applies only to closely defined abusive cybersquatting). Accordingly, Complainant’s allegations of violations of the ACPA will not figure in this decision. Such questions may, however, be raised in a separate proceeding in a court of competent jurisdiction.
Respondent failed to submit a Response in this proceeding.
Complainant has failed to prove that Respondent registered the challenged domain name in bad faith.
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 to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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”).
In the ordinary course, we would address the elements of Policy ¶ 4(a) in the order in which they are presented above. In this instance, however, we find it best to consider first, and exclusively, the question of bad faith registration of the contested domain name, because, in the particular circumstances of this proceeding, that issue resolves the entire controversy. The reason for this is that the Policy requires Complainant to prevail on each and every element of Policy ¶ 4(a) in order to prevail in the proceeding as a whole. If, therefore, Complainant fails as to any one of them, its case fails altogether. And, in that event, consideration of the Complaint may begin and end with examination of the element as to which Complainant has failed to provide proof upon which it can prevail. See, for example, Post.Com Limited v. Peter Neilson, D2002-0690 (WIPO September 17, 2002):
In this Panel’s view, the Complainant has not established … that the Domain Name was registered by the Respondent in bad faith.... In the light of this finding the Panel does not need to consider paragraphs 4(a)(i) and (ii) of the Policy.
To the same effect, see also Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., D2010-0470 (WIPO May 19, 2010).
Registration and Use in Bad Faith
In this case, it is conceded by Complainant that Respondent registered the disputed domain name in 2008. Complainant also concedes that its rights in its CYBERGUARD service mark date from its first use of the mark in commerce on October 1, 2018. Therefore, Respondent’s domain name registration predates Complainant’s rights in the mark by about ten years. On these facts, we must conclude that Respondent could not have registered the disputed domain name in bad faith within the meaning of Policy ¶ 4(a)(iii) because Complainant had no rights to the mark which could have been known to Respondent at the moment of domain name registration, or, for that matter, for a decade afterward. See, for example, Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where a respondent registered a contested domain name prior to a complainant’s first use of a mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO December 11, 2000) (finding no bad faith registration where a respondent registered the domain name there in question before the filing of an application for registration and commencement of use in commerce of a trademark by a UDRP complainant).
The Panel therefore finds that Policy ¶ 4(a)(iii) has not been satisfied.
Complainant having failed to carry its burden on the point of bad faith registration of the contested domain name, it is unnecessary for the Panel to consider or decide questions as to the respective rights of the parties otherwise presented by the Complaint. We therefore decline to examine those issues.
Complainant having failed to establish one of the three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the Complaint herein, seeking transfer of the domain name <cyberguard.com> from Respondent to Complainant, must be, and it is hereby, dismissed.
Terry F. Peppard, Panelist
Dated: March 31, 2022
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