DECISION

 

Proofpoint, Inc. v. Timur El Gohary / Enface FZE LLC

Claim Number: FA2406002104113

 

PARTIES

Complainant is Proofpoint, Inc. ("Complainant"), United States, represented by Brett A. Manchel of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States. Respondent is Timur El Gohary / Enface FZE LLC ("Respondent"), United Arab Emirates.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <proofpoint.ai>, registered with NameCheap, Inc.

 

PANEL

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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 27, 2024; Forum received payment on June 27, 2024.

 

On June 27, 2024, NameCheap, Inc. confirmed by email to Forum that the <proofpoint.ai> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 June 28, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2024 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@proofpoint.ai. Also on June 28, 2024, the Written Notice of the Complaint, notifying Respondent of the email 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On July 19, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant (including its predecessors in interest) has provided security, filtering, monitoring, and other technology-related software and services since at least as early as 2003, and throughout that time has used the PROOFPOINT mark in connection with such software and services. Complainant owns United States trademark registrations for PROOFPOINT in standard character form and for related marks, along with similar registrations in the European Union, China, and several other jurisdictions.

 

The disputed domain name <proofpoint.ai> was registered in February 2022. The name is registered in the name of a privacy registration service on behalf of Respondent. The domain name is being used for a website that prominently displays the PROOFPOINT mark and purports to offer software for fraud protection and identity verification to enterprise clients. The website includes at least six call-to-action buttons that prompt the user for a name, email address, and telephone number. Complainant states that it has attempted to contact Respondent through the website via an anonymous intermediary on several occasions but has been unsuccessful. Complainant alleges that Respondent is using the domain name to disrupt Complainant's business, divert customers, and surreptitiously collect contact information from potential clients of Complainant. Complainant notes that the website provides no contact information, corporate information, or employee information, and alleges that the "partner" testimonials on the website are fictitious. Complainant states that Respondent is not commonly known by the domain name and is not authorized, licensed, or otherwise permitted to use Complainant's mark.

 

Complainant contends on the above grounds that the disputed domain name <proofpoint.ai> is identical or confusingly similar to its PROOFPOINT mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

The disputed domain name <proofpoint.ai> corresponds to Complainant's registered PROOFPOINT trademark, adding only the ".ai" top-level domain. The addition of a top-level domain such as "ai" is normally disregarded for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Headout Inc. v. Nishant Shreshth, DAI2024-0018 (WIPO Apr. 8, 2024) (finding <headout.ai> identical or confusingly similar to HEADOUT); Havtech Group, LLC v. Katie Oleary, FA 2064258 (Forum Oct. 27, 2023) (finding <havtech.ai> identical to HAVTECH); Proofpoint, Inc. v. Shuai Wei Xu, FA 1971965 (Forum Dec. 9, 2021) (finding <proofpointessentials.co> confusingly similar to PROOFPOINT); Proofpoint, Inc. v. Li Jin Dong, FA 1971968 (Forum Dec. 7, 2021) (finding <proopoint.com> confusingly similar to PROOFPOINT). The Panel considers the disputed domain name to be identical to Complainant's registered mark.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

The disputed domain name incorporates Complainant's registered mark without authorization. Its sole apparent use has been for a misleading website that prominently displays Complainant's mark and promotes competing or related services, in what the Panel infers to be an attempt to pass off as Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Headout Inc. v. Nishant Shreshth, supra (finding lack of rights or interests in similar circumstances); Yext, Inc. v. Registration Private / Domains By Proxy, LLC, FA 2065117 (Forum Nov. 1, 2023) (same).

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent'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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."

 

Respondent used a privacy registration service to register a domain name corresponding to Complainant's registered mark and is using it for a misleading website that prominently displays the mark and promotes competing or related services, in what the Panel infers to be an attempt to pass off as Complainant. Respondent has not come forward to offer an alternative explanation for the selection of the domain name or otherwise participated in this proceeding. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., Headout Inc. v. Nishant Shreshth, supra (finding bad faith registration and use in similar circumstances); Yext, Inc. v. Registration Private / Domains By Proxy, LLC, supra (same). The Panel so finds.

 

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <proofpoint.ai> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David E. Sorkin, Panelist

Dated: July 19, 2024