Javacool Software Development, L.L.C. v. Elbanhawy Investments
Claim Number: FA0611000836772
Complainant is Javacool Software Development, L.L.C. (“Complainant”), represented by Christine
W. Trebilcock, of Cohen & Grigsby, P.C.,
The Respondent is Elbanhawy
Investments (“Respondent”), located
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <spywareblaster.com> and <spywareguard.com> (hereafter referred to individually, or collectively as the “Domain Names”), registered with Go Daddy Software, Inc.
Each of the undersigned Panelists 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 a Panelist in this proceeding.
Louis E. Condon, Sandra J. Franklin and Christopher Gibson (chairman) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 9, 2006.
On November 9, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <spywareblaster.com> and <spywareguard.com> domain names are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 6, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on December 6, 2006.
Complainant submitted an Additional Submission on December 13, 2006, two days after the deadline pursuant to NAF Supplemental Rule 7. Complainant addressed this delay, indicating that it was unintentional and that Complainant had received a copy of Respondent’s Response only on December 7, one day after NAF had received it. The Panel considers that the Additional Submission should be accepted.
On December 15, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Louis E. Condon, Sandra Jo Franklin and Christopher Gibson as Panelists.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
1. Complainant’s Complaint is based on its common law and registered trademark rights in the SPYWAREGUARD and SPYWAREBLASTER marks (collectively, the “Marks”). Complainant has submitted with its Complaint certificates of registration before the United States Patent and Trademark Office (“USPTO”) for SPYWAREGUARD (Reg. No. 3,058,421 issued February 14, 2006) and SPYWAREBLASTER (Reg. No. 3,087,159 issued May 2, 2006), as well as a certificate of registration for SPYWAREBLASTER before the European Union (“EU”) trademark office.
2. Complainant alleges that the Marks have been used in commerce for nearly five years in connection with its software products, SpywareBlaster and SpywareGuard, which protect computers from spyware, adware and other malicious and unwanted software. SPYWAREBLASTER and SPYWAREGUARD were first used in commerce on October 27, 2002 and January 11, 2003, respectively. Complainant alleges that both of its products are well-known and highly rated, and have been downloaded millions of times by Internet users. Complainant has attached the sworn declaration of R. Rudzki, as well as substantial documentary evidence, to support its claims in this respect.
3. Complainant contends that the Domain Names in dispute are identical to Complainant’s marks, except for the suffix “.com.”
4. Complainant contends that Respondent has no rights or legitimate interests in the Domain Names. Complainant is the exclusive owner of the Marks and has not licensed them for use by Respondent. In this regard, Complainant in March 2004 previously sent a cease and desist letter to Bullet Proof Software, an entity which Complainant believes to be the true owner or controller of Respondent, but received no response.
5. Complainant asserts that Respondent has not used the Domain Names in connection with a bona fide offering of goods or services – “Respondent’s use is anything but bona fide.” In this regard, an Internet user visiting the web sites associated with the Domain Names “is presented with a fraudulent assertion that the sites are related to products offered under the SPYWAREBLASTER or SPYWAREGUARD Trademarks, respectively.” Complainant provided copies of the Respondent’s web pages to support this assertion. If one clicks on the hyperlinks on Respondent’s sites, a free computer scan is offered. However, Complainant has offered evidence from independent third-party sources to show that Respondent’s scanning product is considered within the industry to be “rogue anti-spyware” because Respondent’s program may return “false-positive results” to induce a user into purchasing Respondent’s spyware removal product named “BPS Spyware Remover.” These practices are alleged to be misleading sales practices.
6. Complainant further contends that Respondent is misappropriating the goodwill and recognition associated with Complainant and its Marks, by usurping Internet traffic intended for Complainant and tricking users who believe they are dealing with Complainant into purchasing Respondent’s software products. Complainant argues that such practices cannot support a finding that Respondent has a legitimate interest in, or has been making bona fide use of, the Domain Names.
7. Complainant further alleges that Respondent and Respondent’s software products and services are not commonly known by the Spywareblaster or Spywareguard names. The Whois record submitted by Complainant lists the registrant of the Domain Names as Domains by Proxy (“DBP”), which is a company that provides proxy services to those who wish to remain anonymous. In this respect, Complainant states that there is “no official contact information available at either the <spywareblaster.com> or <spywareguard.com> Web sites.” After Complainant contacted DBP, DBP in turn contacted its customer, which according to DBP’s contractual policy is required then to contact Complainant directly. Complainant received a message from “H4Host.com,” presumably as the entity which had registered the Domain Names. The same problem, however, happened again because H4Host.com is simply a domain name that was also registered through DPB, by someone or some company that wanted its identity to be masked. Recently, the true Respondent must have updated the Whois records associated with the Domain Names to reveal its identity as Elbanhawy Investments, now named as Respondent in Complainant’s corrected filing of the Complaint. Complainant alleges that Respondent’s identity masking efforts initially prevented Complainant from discovering the true identity of Respondent, and show that Respondent and its products or services are not commonly known by the Spywareblaster or Spywareguard names.
8. Complainant contends that Respondent registered the Domain Names in bad faith, in particular, to block Complainant from reflecting its Marks in corresponding domain names (Policy ¶ 4(b)(ii)), and to divert Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s Marks 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 (Policy ¶ 4(b)(iv)).
9. The Complainant points to two
previous decisions, Lavasoft AB v. Bullet-Proof Software, FA 570313 (Nat. Arb.
Forum Nov. 16, 2005) (“Lavasoft I”) and
Thus, considering this conduct, Complainant asserts that these cases establish a pattern whereby Respondent or one of its affiliates has registered domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.
Complainant also refers to searches of the Internet archive Wayback Machine, (located at www.archive.org), to support its contention that the Domain Names have been associated with BPS, at least since February 2004.
11. Finally, Complainant provides detailed argument to show that Respondent is taking advantage of the confusing similarity between the Domain Names and Complainant’s Marks to divert Internet users seeking Complainant’s software products to Respondent’s own website for commercial gain, and that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Complainant refers to factors used in cases of trademark infringement in the United States federal courts to demonstrate its argument: the similarity of the Domain Names to the Marks; evidence of actual confusion (Complainant has provided documentary evidence in support); similarity of goods and services (identical); strength of the SPYWAREBLASTER and SPYWAREGUARD Marks (reference to industry sources); and the similarity of marketing channels (marketing channels are identical). For these factors Complainant has submitted supporting evidence and explanation.
1. Respondent asserts that it has rights and legitimate interests in the Domain Names, and is making legitimate use of them without intent to misleadingly divert consumers or to tarnish Complainant’s Marks.
Respondent states that it has produced
anti-spyware and security products since 2001, and that its products have been
featured in magazines in the
3. Respondent alleges that it has produced anti-spyware programs for different “affiliates” under different product names, such as Adware Blaster, Adware Guard, Spyware Zapper, Adware Zapper and others:
Those products differ only in the ‘skin’, that is, how the program appears to the user. Respondent creates skins for its affiliates so as not to cause sales conflicts between Respondent’s affiliates. At times, Respondent links the corresponding Web sites to its main Web site, <bulletproofsoft.com>, which sells the same program with a different skin.
4. Respondent states that as the need arose, it has acquired more affiliates. It claims that one of the products it produced in 2002 had a scanning and deleting module called Spyware Blaster and real-time monitoring module called Spyware Guard.
5. Respondent contends that it is now in the process of replacing the affiliates for the disputed Domain Names. Respondent alleges that it has modified the anti-spyware programs on its main Web site, <bulletproofsoft.com>, and the modified programs use new program skin components that no longer work with the prior versions of the Spyware Blaster and Spyware Guard programs created by Respondent. Respondent also states that it has contracted out to a third-party to update Respondent’s prior affiliate programs to its main Anti-Spyware program featured on <bulletproofsoft.com> to be updated to use the new skin software components that were purchased by Respondent. This migration process is ongoing, and takes time as Respondent operates other affiliate sites for Respondent’s anti-spyware programs. In the meantime, Respondent alleges the Domain Names “are placeholders for the future affiliates.”
6. Respondent alleges that on November 10, 2002 it registered the Domain Names in dispute, and that the web sites associated with these Domain Names were running on that same day, selling the Spyware Blaster and Spyware Guard product.
7. Respondent responds to the allegations of Complainant concerning the Lavasoft I and II cases noted above. Respondent does not deny that it intentionally registered domain names corresponding to the trademarks of a competitor in those cases. Respondent explains that it registered the domain names because it was trying “to get the attention” of its competitor:
Lavasoft, a competitor of Respondent, had written their anti-spyware program to recognize Respondent’s and its affiliates’ anti-spyware programs as malicious software, thereby causing Respondent’s products to be removed from user’s computers. Numerous letters to Lavasoft went unanswered. Finally, in an attempt to get the attention of Lavasoft, Respondent registered the domains <adaware.ws> and <adware.us>.
8. Respondent indicates that the parties in Lavasoft I and II entered into a settlement and “[t]his deal was reached … outside the UDRP, and Respondent did not respond to the Complaint because it had presumed that the issue was settled.” This explanation by Respondent is offered in support of the following technical point:
Complainant attempts to separate the two domain names in order to show a pattern of conduct because there are no other instances where Respondent registered a domain name that incorporated the registered trademark of a competitor. It was a single case from a single set of facts, not two cases, and a pattern cannot be established from a single case.
9. Respondent contends that it registered and uses the Domain Names in good faith with a bona fide offering of goods and services and therefore had rights and legitimate interests in the domain names under the Policy ¶ 4(a)(ii). As noted above, Respondent alleges it has produced anti-spyware and security products since 2001, including products named Spyware Blaster and Spyware Guard in 2002.
11. Finally, Respondent claims that it registered the Domains Names on November 10, 2002, prior to (i) Complainant’s first use of the SPYWAREGUARD Mark and (ii) any knowledge of Complainant’s SPYWAREBLASTER Mark. With respect to the SPYWAREGUARD, Complainant’s USPTO registration certificate specifies January 11, 2003 as the date of Complainant’s first use. With respect to the SPYWAREBLASTER, the Respondent asserts it “was completely unaware of [the Complainant’s] meager usage of SPYWAREBLASTER prior to its domain registration date of November 10, 2002.” Taking the offensive, Respondent asserts that there is a question regarding Complainant’s actual date of first use of the SPYWAREBLASTER mark.
C. Complainant’s Additional Submission
1. Complainant’s Additional Submission addresses the use of the SPYWAREBLASTER Mark prior to the date that the <spywareblaster.com> domain name was registered by Respondent. Complainant has submitted documentary evidence of several Internet postings and articles, including articles in Spyware Weekly and on Doxdesk.com (a major former anti-spyware site). These publications occurred on October 27, October 28 and November 2, 2002.
Javacool Software Development, markets and sells well-known computer
anti-spyware software products under the names SpywareBlaster and
SpywareGuard. These products have been
downloaded millions of times and are well-regarded within the industry. Complainant holds
The Respondent registered the Domain Names on November 10, 2002.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
There are two requirements that a Complainant must establish under Policy ¶ 4(a)(i): that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks. Although a time element is not specifically stated in Policy ¶ 4(a)(i), some UDRP Panelists have taken the view that
[T]his provision necessarily implies that the Complainant's [trademark] rights predate the Respondent's registration and use of the Domain Name. Any other interpretation would allow a junior trademark user to challenge a prior domain name registration, a possibility that is obviously contrary to the intent of the Policy and to trademark law generally. Phoenix Mortgage Corporation v. Tom Toggas, D2001-0101 (WIPO March 30, 2001).
The Panel notes that the World Intellectual Property Organization (“WIPO”) has specifically addressed this issue in its “Overview of WIPO Panel Views on Selected UDRP Questions.” The Overview was produced by the WIPO Secretariat staff after reviewing and analyzing over 100 UDRP decisions by more than 80 UDRP Panelists. The Overview provides the following response to the question “[d]oes the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?”:
Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind. (No emphasis added).
See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (the Policy does not require that the trademark be registered prior to the domain name. The fact that the disputed Domain Name predates Complainant’s trademark registration may only be relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii)).
Here, the Complainant has established rights in the SPYWAREBLASTER and SPYWAREGUARD Marks, as evidenced by its USPTO and EU trademark registrations and the Marks’ widespread use in commerce over the last several years. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
There is also no question that the <spywareguard.com> and <spywareblaster.com> Domain Names contain Complainant’s respective Marks in their entirety, with the mere addition of the generic top-level suffix “.com.” This results in <spywareguard.com> being identical to the SPYWAREGUARD Mark and <spywareblaster.com> being identical to the SPYWAREBLASTER Mark. See Treeforms, Inc. v. Cayne Indus. Sales, Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark); W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).
The Panel finds that Complainant has established that the Domain Names registered by Respondent are identical to Complainant’s Marks pursuant to Policy ¶ 4(a)(i).
As noted above, Complainant asserts that Respondent lacks rights and legitimate interests in the Domain Names. A complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Here, Complainant has demonstrated that it is the exclusive owner of the Marks and has not licensed them for use by Respondent. Complainant has further alleged that Respondent and Respondent’s software products and services are not commonly known by the SpywareBlaster or SpywareGuard names. Rather, Complainant has submitted evidence to show that Respondent has taken steps to actively mask its true identity, which it now has acknowledged is either Elbanhawy Investments or Bullet-Proof Software. Complainant has provided evidence that Respondent’s use of the Domain Names has not been in connection with a bona fide offering of goods or services. Instead, a visitor to the web sites associated with Respondent’s Domain Names “is presented with a fraudulent assertion that the sites are related to products offered under the SPYWAREBLASTER or SPYWAREGUARD Trademarks.” Complainant has therefore alleged that Respondent is misappropriating the goodwill and recognition associated with Complainant and its Marks, by usurping Internet traffic intended for Complainant and tricking users who believe they are dealing with Complainant into purchasing Respondent’s software products. Complainant has submitted evidence that is more than sufficient to shift the burden to Respondent.
Respondent has contended, in response, that it has rights and legitimate interests in the Domain Names, and is making legitimate use of them without intent to misleadingly divert consumers or to tarnish Complainant’s Marks. It claims that after it registered the Domain Names in November 2002, one of the software products it produced and sold on its web site had a scanning and deleting module called Spyware Blaster and real-time monitoring module called Spyware Guard. Respondent has provided no evidence in support of this assertion, and no evidence at all in support of the other factual assertions in its Response. Respondent alleges that it has produced various anti-spyware programs as well as “skins” for different affiliates under different product names, such as Adware Blaster, Adware Guard, Spyware Zapper, Adware Zapper. The Spyware Blaster and Spyware Guard programs allegedly developed by Respondent are apparently to be regarded as additional products which were used with various skins by Respondent. Respondent is not at all clear in exactly how it used these two programs, in connection with which of Respondent’s sites and for what length of time. Was there any use initially? This is what Respondent has alleged. Did that use take place on a continuous basis on Respondent’s site associated with the Domain Names? This key question Respondent has not answered. Respondent has alleged that it is in the process of updating the Spyware Blaster and Spyware Guard programs to use the new <bulletproofsoft.com> Spyware Remover program’s skin control and feature enhancements, but that, in the meantime, the Domain Names “are placeholders for the future affiliates.”
The Panel considers that Respondent has not overcome the prima facie showing of Complainant, and has not established that it has any rights or legitimate interests in the Domain Names. Any such information, such as evidence that Respondent actually did develop and sell software products under the names Spyware Blaster and Spyware Guard, as well as evidence that it continued to do so for any length of time during which rights or interests might accrue to Respondent, would be in the hands of Respondent. Yet Respondent has not submitted any evidence at all in support of the arguments made in its Response. The Panel also finds that Respondent has not convincingly responded to the Complainant’s claims, which were supported by documentary evidence, that Respondent was making misleading and fraudulent assertions on the sites associated with the Domain Names that the products were offered under the SPYWAREBLASTER or SPYWAREGUARD Marks. Finally, Respondent did not explain why it has chosen to mask its true identity, as well as the details available for determining the registrant of the Domain Names. All of these factors together indicate that Respondent’s practices were calculated to confuse and mislead Complainant’s customers. Such practices cannot be considered as a bona fide offering of goods or services. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Complainant has met the burden under the Policy ¶ 4(a)(ii).
The final issue is that of bad faith registration and use by Respondent. The Panel considers that this is the most difficult issue for Complainant’s case, because although there is sufficient evidence that Respondent has been using the Domain Names in a bad faith manner which unfairly takes advantage of Complainant’s trademark rights, under the conjunctive requirement of the Policy ¶ 4(a)(iii), Complainant must also demonstrate Respondent registered the Domain Name in bad faith. In other words, if the registration of the Domain Names pre-dates Complainant’s acquired trademark rights, does this pose an insurmountable hurdle for Complainant to overcome?
In this case, it is clear that Respondent is
a real Internet insider, playing deceptive rough-and-tumble games in order to
gain commercial advantage. Respondent
has concealed its identity from the time of registration of the Domain Names, and its practices have
been regarded as “rogue” within the Internet security industry. We also are well-aware that in the Lavasoft
I & II UDRP cases, Respondent intentionally registered domain names
that were confusingly similar to the trademarks of a competitor. Respondent’s explanation in its Response in
this case only confirms that it engaged in a form of Internet blackmail, by
deliberately registering words which infringed on the trademark rights of a
competitor in order to “get the attention” of
that competitor. Here, the Panel
finds that Respondent has been using the Domain
Names in a manner calculated to take advantage of Complainant’s reputation
and goodwill, to confuse Complainant’s potential customers and to disrupt
Complainant’s business (Policy ¶¶ 4(b)(iii) and (iv)).
Indeed, the facts as presented may well make out a case for trademark
Finally, however, we
must also consider whether Respondent registered
the Domain Names in bad faith. The
Policy’s conjunctive requirement of bad faith registration and use has been carefully considered and commented upon in
prior UDRP decisions. See Telstra Corporation Limited v. Nuclear
Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Respondent in its certified Response has
alleged that it “initially registered the subject domains prior to
Complainant’s use of SPYWAREGUARD and prior to any knowledge of Complainant’s
SPYWAREBLASTER.” In the face of this
assertion, the Panel considers the following circumstances: (i) the evidence
submitted by Complainant, which showed that its SPYWAREBLASTER mark and
software product were receiving significant attention within the industry
security through Internet postings and articles published on leading
anti-spyware sites; (ii) Respondent’s evident and self-acknowledged role as an
active player within this same industry sector, during the same period when
Complainant first used its SPYWAREGUARD and SPYWAREBLASTER Marks; (iii)
Respondent’s awareness of and focus on its competitors and demonstrated
willingness to use questionable tactics vis
à vis these competitors; and (iv) Respondent’s efforts to conceal its
identity. Indeed, a respondent’s
“deliberate steps to ensure that its true identity cannot be determined and
communication with it cannot be made” has been considered a factor in support
of bad faith findings since the earliest of UDRP decisions.
The Panel finds that Complainant has established all three elements required under the ICANN Policy with respect to the <spywareblaster.com> Domain Name, but has failed to establish bad faith registration with respect to the <spywareguard.com> Domain Name. The Panel therefore concludes that relief shall be GRANTED as to <spywareblaster.com> and DENIED as to <spywareguard.com>.
Accordingly, it is Ordered that the <spywareblaster.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Christopher Gibson, Chairman Panelist
Louis E. Condon, Panelist
Sandra J. Franklin, Panelist
Dated: January 2, 2007
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National Arbitration Forum
 Complainant filed its Complaint with NAF initially on November 9, 2006, but then re-filed its Complaint on November 15, 2006 upon discovering the identity of Respondent and properly naming that entity in its Complaint.