The Complainant is Citrix Systems, Inc. of Bedford, Massachusetts, United States of America, represented by Burns & Levinson LLP, United States of America.
The Respondent is Lens Lim of Kazakhstan. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 14, 2012. On September 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2012
The Center appointed Alistair Payne as the sole panelist in this matter on October 16, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
In October, 2011, the Complainant acquired Novel Labs, Inc., which is a market-leading provider of secure, cloud-based data storage, sharing and collaboration tools. The Complainant’s newly acquired web based file sharing business has operated since 2005 under the SHAREFILE mark and it owns a United States (“US”) federal word mark registration for this mark with Registration Number 3826353, filed in 2010. The Complainant operates a website at the domain name , which it uses to promote and market its services.
The disputed domain name was registered in April 2011. 5. Parties’ Contentions A. Complainant
The Complainant says that since the launch of its SHAREFILE business in November 2005, it grew in the succeeding six years to having almost 20,000 paying corporate customers and 5 million business users spread across more than 100 countries around the world. It says that it partners with more than 10,000 companies in 100 countries and in 2011 had annual revenues of more than USD 2.21 billion.
The Complainant submits that the disputed domain name is identical or confusingly similar to its SHAREFILE federal word mark registration as noted above.
It says that the Respondent has no connection or affiliation with it and has not received any license or consent, express or implied, to use the SHAREFILE trade mark in domain names or in any other manner. The Complainant further submits that to its knowledge the Respondent has never been known by the disputed domain name and its conduct in using the disputed domain name to direct Internet users to a website providing a service that directly competes with the Complainant’s SHAREFILE branded service is not legitimate.
The Complainant submits that the Respondent must have known of its SHAREFILE mark and business when it registered the disputed domain name. It says that based on its reputation and extensive advertising, including Internet, radio, and print advertising, featuring its name and mark throughout the United States that it must have been aware of its rights. Even a simple search via a GOOGLE search using the keyword “sharefile” would have revealed that the SHAREFILE mark is connected to the Complainant, quite apart from the fact that it had existing trade mark registrations in the United States.
As far as use in bad faith is concerned, the Complainant says that the Respondent uses the disputed domain name, which is identical to its SHAREFILE mark for a service that directly competes with the Complainant’s services. In doing so the Respondent intentionally attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark.
In addition the Complainant notes that the Respondent’s failure to provide proper contact information for its listed Administrative Contact is further indicative of bad faith. In this regard the Complainant says that through its counsel it attempted to contact the Respondent by sending correspondence to the email address listed as the Administrative Contact in the Respondent’s publicly available WhoIs listing. However, the Complainant’s email was immediately returned with the message “550 No Such User Here.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that for the purposes of the Policy the disputed domain name (excluding the “.com” element) is identical to the Complainant’s United States federal word mark registration for SHAREFILE which, is registered under number 3826353. As a result the Panel finds that the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
There is no evidence before the Panel that the Respondent has any rights or legitimate interests in the disputed domain name. In particular the Complainant says that it has never permitted the Respondent’s use of the SHAREFILE mark in any way, and there is no suggestion that the Respondent is otherwise known as “sharefile” or “”. In addition for the reasons set out below the Panel finds that the Respondent’s use of the disputed domain name is not legitimate. Accordingly the Panel finds that the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
By April 2011, the date of registration of the disputed domain name, the Complainant’s SHAREFILE mark had been in use since 2005, and based on the evidence submitted of the scale of the Complainant’s business worldwide and of its use on the Internet, the Panel infers that even if the Respondent based in Kazakhstan, was not aware of the Complainant’s United States federal trade mark registration, it is more likely than not to have been aware of the Complainant’s business and use of the mark. Even though the SHAREFILE mark is composed of two commonly used words in the English language, which form a phrase that is prima facie and without evidence of secondary meaning descriptive of the service for which it is used, there is nothing before the Panel to suggest that the Respondent created the disputed domain name independently and co-incidentally, or that it set out to use it for some alternative purpose. Particularly in the circumstances of the very substantial worldwide use made of the SHAREFILE mark by the Complainant, the Panel is prepared to infer that the disputed domain name was registered in bad faith.
As far as the Respondent’s use of the disputed domain name is concerned, it is using the disputed domain name to resolve to a website at which there appears to be a file sharing service similar to the Complainant’s service and that according to the Complainant competes with it. Even though the website to which the disputed domain name resolves is clearly different from the Complainant’s website, the Panel finds that the Respondent is using the Complainant’s mark to confuse and divert Internet users to a directly competing service amounts to bad faith under paragraph 4(b)(iv) of the Policy (for example, see Alstom v. Yulei,WIPO Case No. D2007-0424).
In addition the Panel notes that the Respondent appears to have given false contact information to the Registrar of the disputed domain name. The Complainant was unable to contact the Respondent by email and the Center, although successfully sending email notifications, found that the Respondent had provided a non- existent physical address on attempting to send materials to the Respondent by courier. The Panel finds that this is also indicative of the Respondent’s bad faith.
As a result the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and the Complaint succeeds under the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: October 29, 2012
Full & Egal Universal Law Academy