The Complainant is Malwarebytes, Corp. of San Jose, California, United States of America (“US”), represented by Fenwick & West, LLP, US.
The Respondent is Charlie Jones of Texarkana, Arkansas, US. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2014. On February 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2014, 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.
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 February 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2014. The Center received an informal email communication from the Respondent on March 13, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on March 17, 2014.
The Center appointed Richard G. Lyon as the sole panelist in this matter on March 26, 2014. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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
The Complainant provides anti-spyware software and security solutions to consumers and businesses. One of its products, reflected in its corporate name, is Malwarebytes Anti-Malware. The Complainant holds two trademarks that incorporate the term MALWAREBYTES that are duly registered on the principal register of the United States Patent & Trademark Office (USPTO). The earliest of these was registered in December 2009, claiming a first use in commerce of 2008. The Complainant actively markets its Malwarebytes products and asserts that these products protect more than 80 million computers. The Complainant also owns and uses several domain names that incorporate the word “Malwarebytes”.
The Respondent registered the disputed domain name in August 2013. An Internet user who enters the disputed domain name into his or her browser is automatically redirected to , at which is a website whose banner headline reads “Protect Your Mac with Malwarebytes for Mac Alternative.” This is immediately followed by “Malwarebytes Anti-Malware is one of the best software to detect and remove malware/antivirus under Microsoft Windows only. For Mac users, an Malwarebytes for Mac alternative is required.” A product called MacKeeper is offered for sale or license. At the bottom of the first page in smaller type is a disclaimer: “Malwarebytes is a registered trademark of Malwarebytes Corporation. This site is not affiliated with Malwarebytes Corporation in any way.” 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its USPTO-registered trademarks, that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith. The disclaimer on the Respondent’s website does not insulate the Respondent from a finding of bad faith; on the contrary, it demonstrates that the Respondent was aware of the Complainant, the Complainant’s product, and the Complainant’s mark when it registered the disputed domain name. B. Respondent
The Respondent did not submit a formal Response. The substantive portion of the Respondent’s informal communication reads in its entirety:
“We created the site not to create confusion. It’s true that Malwarebytes software products only works on Windows. There isn’t an OFFICIAL Mac version of Malwarebytes software. Every visitor to the site is explicitly told it’s a Malwarebytes for Mac ALTERNATIVE. They are not downloading or buying an official Malwarebytes product.
Every Malwarebytes customer has the right to know what’s the suitable product to protect their Mac computer, if Malwarebytes doesn’t have such a product. We have no reason letting those people wander around and miss the best solution. Google enabling any legitimate user to bid competitor’s brand and trademark is based on such type of rights.
Anyway, we respect the decision made by Administrative Panel.”
The Panel will treat this as he would a formal Response. 6. Discussion and Findings
The Panel finds that the Complainant has carried its evidentiary burden of demonstrating by a preponderance of the evidence each of the requirements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant holds USPTO-registered marks for MALWAREBYTES, which is the dominant feature of the disputed domain name. Adding a common phrase, here “for Mac,” does not obviate confusion with the Complainant’s mark. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9. The Respondent’s disclaimer, as with any other content on the Respondent’s website, is irrelevant in the Panel’s determination under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use its marks, and nothing in the evidentiary record indicates that the Respondent is in any way known by the term “Malwarebytes”. The burden of production thus shifts to the Respondent to demonstrate that it holds a right or legitimate interest in the disputed domain name. WIPO Overview 2.0, paragraph 2.1.
The Respondent argues that its use of the Complainant’s mark is informational and accurate, allowing Mac users to find a comparable product that, unlike the Complainant’s product, functions on Mac computers. That statement may be true but it misdescribes the Respondent’s use of the Complainant’s mark and misses the point of the Policy. The Panel’s inquiry under paragraph 4(a)(ii) looks not to the legitimacy of the Respondent’s business but rather to the legitimacy of the use of the Complainant’s mark in the disputed domain name. General Motors LLC v. Flashcraft, Inc DBA Cad Company,WIPO Case No. D2011‑2117 (“the issue is whether [the respondent] was entitled to appropriate the Complainant’s trademark to identify that business”). As text on the Respondent’s website a reference to the Complainant’s mark could be informational and, if accurate, nominative fair use (see discussion in third following paragraph) under US trademark law. But the issue is the Respondent’s incorporation of that mark into the disputed domain name, something the Respondent has no automatic right to do.
The Respondent undeniably uses the disputed domain name to draw prospective customers to its own commercial website. In the words of the Flashcraft case, supra, the Respondent’s use of the Complainant’s mark has been “in the trademark sense,” as an identifier of the Complainant’s product. Though the products and services at the Respondent’s website may be bona fide, without authorization to use the mark its incorporation into the disputed domain name is not “in connection with a bona fide offering of goods or services” for purposes of Policy, paragraph 4(c)(i). In fact the Respondent is not using the disputed domain name for any reason except automatically to redirect Internet users to its own site. This is “exactly the harm the Policy was adopted to address,” Justice for Children v. R neetso / Robert W. O'Steen,WIPO Case No. D2004-0175.
The Respondent does not claim that the word or phrase “malwarebytes” is generic or commonplace. Nor could he; while consisting of two common words the combination is not an everyday word. And the Respondent’s claim of providing information about security services for Mac users ipso facto acknowledges incorporation of the Complainant’s mark as a commercial identifier, not as a generic term.
A recent decision, American Society of Mechanical Engineers v. Freeport Welding & Fabricating Inc.,WIPO Case No. D2014-0009, suggests another defense that might be available. In the Freeport case the respondent was a fabricator certified by the complainant, a professional association that among other things set standards and certified groups that were capable of meeting its standards. The respondent had longtime registrations of several domain names that included the complainant’s ASME mark together with terms descriptive of its services – for example, , , . As to these domain names the panel found that the respondent had sustained a defense of nominative fair use: “Respondent, as any ASME-certified entity, cannot identify its goods and services as “ASME-certified” without use of the ASME mark. Respondent only uses the ASME mark to accurately identify its services as ASME-certified services. Finally, neither Respondent’s website nor the disputed Domain Names suggest any sponsorship beyond the certification which Complainant has already bestowed upon Respondent. It is difficult if not impossible for an ASME-certified entity to market its services without use of the ASME mark. So, Respondent has legitimate interests in identifying its services by using Complainant’s mark.”
Applying a similar analysis to this proceeding might yield a comparable result. If the Complainant’s product does not work on Mac computers, it could be said (and the Respondent implies in his informal communication with the Center) that the Respondent uses the Complainant’s MALWAREBYTES mark only for the purpose of identifying its own product. Even if this Panel believed that nominative fair use sometimes might provide a right or legitimate interest, the Respondent here has not met the second or third elements of the Freeport test. There is no indication that the Respondent must use the Complainant’s mark to identify its own product, and the disputed domain name does suggest a connection with the Complainant.
Though not necessary to this Decision the Panel will note his skepticism about applying the doctrine of nominative fair use to an analysis of rights or legitimate interests under paragraph 4(a)(ii) of the Policy. For the reasons given in the second and third paragraphs of this section, the issue is the right to use the Complainant’s mark in the disputed domain name, not the accuracy of the description of the Respondent’s business or product. It is more analogous to contract law rather than infringement or other tort. With due respect to the eminent panelist who decided the Freeport case, any analysis of nominative fair use in a Policy proceeding belongs, if at all, to whether a domain name was registered and used in bad faith. Under that Policy head, for example, circumscribed use and longtime acquiescence might make it difficult to demonstrate registration in bad faith. C. Registered and Used in Bad Faith
As the Complainant argues, the Respondent’s use of the disputed domain name reveals that the Respondent knew of the Complainant’s mark when he registered the disputed domain name, and selected it to take advantage of whatever renown attaches to it. All use of the disputed domain name has been to draw prospective customers to a site featuring the Respondent’s own commercial product. In the words of the Policy, paragraph 4(b)(iv), the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [his] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [his] website or location or of a product or service on his website or location.” In this proceeding such evidence demonstrates both registration and use in bad faith for Policy purposes. 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.
Richard G. Lyon
Sole Panelist
Date: April 6, 2014
1 This Panel sees other significant problems in applying the doctrine of nominative fair use under paragraph 4(a)(ii). For example, it could significantly interfere with or complicate the consensus view in WIPO Overview 2.0, paragraph 2.3 addressing a reseller’s right to use its manufacturer’s mark in a domain name.
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