Bitwarden, Inc. v. Privacy Protection
Claim Number: FA2209002013920
Complainant: Bitwarden, Inc. of Santa Barbara, California, United States of America.
Complainant Representative:
Complainant Representative: Redfield IP PC of Redwood City, California, United States of America.
Respondent: Privacy Protection of Chicago, Illinois, US.
Respondent Representative: N/A
REGISTRIES and REGISTRARS
Registries: ShortDot SA
Registrars: Sav.com, LLC
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Flip Jan Claude Petillion, as Examiner.
Complainant submitted: September 28, 2022
Commencement: October 5, 2022
Default Date: October 20, 2022
Having reviewed the communications records, the Examiner finds that Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant, Bitwarden, Inc., offers password management products and services under the name BITWARDEN, including through the website www.bitwarden.com. The Complainant owns several registered trademarks for BITWARDEN, including the following:
- a U.S. word mark BITWARDEN registered under No. 6,227,472 on December 22, 2020 in classes 9 and 42.
Respondent registered the disputed domain name <bitwarden.icu> on September 21, 2022. The Complainant claims that the disputed domain name referred to a website which mimics the Complainant’s website, using identical content. The disputed domain name is currently inactive.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS
1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark:
(i) for which the Complainant holds a valid national or regional registration
and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the
time the URS complaint is filed.
Determined: Finding for Complainant
The record makes clear that the Complainant "holds a valid national or regional registration and that [it] is in current use". The Examiner finds that the second-level portion of the disputed domain name is identical to the Complainant’s BITWARDEN registered trademark. As the top level domain is irrelevant in assessing identity or confusing similarity, the new gTLD “.ICU” is of no consequence here (Facebook Inc. v. Radoslav, Claim Number: FA1308001515825). As the registered domain name is identical to a word mark for which the Complainant holds a valid national or regional registration that is in current use, the Examiner considers that the Complainant has satisfied the first element of the URS in accordance with paragraph 1.2.6.1 of the URS.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Complainant has not authorized the Respondent to use its registered BITWARDEN trademark. The Respondent has not submitted any evidence to prove that he or she is commonly known under the disputed domain name. There is no evidence about rights or legitimate interest in BITWARDEN and the disputed domain name, or evidence about a fair use either.
The Examiner observes that the disputed domain name is identical to the Complainant’s BITWARDEN trademark. The Examiner finds that the use of the gTLD “.ICU”, which can be read as “I see you”, could even increase the confusion with the Complainant’s products and services related to password management. Therefore, the Examiner finds that the disputed domain name carries a high risk of implied affiliation with the Complainant (see section 2.5.1 of WIPO Overview 3.0). The Respondent does not contest the arguments of the Complainant. Therefore, the Examiner finds that the prima facie case of the Complainant has not been rebutted and that the second element for the Complainant to obtain the suspension of a domain name under URS 1.2.6.2 has also been proven.
[URS
1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant has registered or acquired the domain name primarily for the
purpose of selling, renting or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in
excess of documented out-of-pocket costs directly related to the domain name;
or
b. Registrant has registered the domain name in order to prevent the trademark
holder or service mark from reflecting the mark in a corresponding domain name,
provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract
for commercial gain, Internet users to Registrant’s web
site or other on-line location, by creating a likelihood of confusion with
the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of Registrant’s web site or location or of a
product or service on that web site or location.
Determined: Finding for Respondent
The Complainant claims that the disputed domain name referred to a website which mimics the Complainant’s website, using identical content. However, this claim cannot be verified by the evidence provided. The Complainant provided a .pdf document showing what appears to be a printout of a website corresponding to the Complainant’s official website. However, the Examiner observes that the URL is missing. It is therefore impossible to verify whether this printout relates to a website linked to the disputed domain name. As the disputed domain name is currently inactive, the Examiner cannot confirm the Complainant’s claim by its own research either. In these circumstances, the Examiner finds that the Complainant did not make a prima facie case, proven by clear and convincing evidence, for the disputed domain name to be used in bad faith.
Rule 10 of the Rules provides that in order to ensure expedience of the proceeding, the Examiner may not request further statements or documents from either of the Parties.
Therefore, the Examiner finds that the third element for the Complainant to obtain the suspension of a domain name under URS 1.2.6.3 has not been proven by clear and convincing evidence.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.
<bitwarden.icu>
Flip Jan Claude Petillion, Examiner
Dated: October 25, 2022
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