Complainant is Citrix Systems, Inc. of Massachusetts, United States of America ("USA"), represented by Burns & Levinson LLP, USA.
Respondent is Nikki Sal of New Jersey, USA. 2. The Domain name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2015. On March 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 3, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 4, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 4, 2015.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on March 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 7, 2015.
The Center appointed Michael Albert as the sole panelist in this matter on April 21, 2015. 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
Complainant, Citrix Systems, Inc. ("Citrix"), is a provider of cloud, networking and virtualization technologies, incorporated under the laws of the state of Delaware, USA.
It has been using the XEN Marks described below since at least as early as 2002.
The Disputed Domain Name was registered on February 10, 2015. 5. Parties' Contentions A. Complainant
Complainant is an industry leader in the development, manufacture and distribution of remote access, collaborative tools, virtual desktop solutions and infrastructure systems. Since at least as early as 2002, Complainant, and/or its predecessor in interest, adopted and began to use in commerce the designation and trademark XEN and a stylized "xen" design for and in connection with virtualization software, hardware and related goods and services. Since that time, Complainant has expanded and adopted a family of XEN related trademarks that all share the XEN element (the "XEN Marks"). The family of XEN Marks includes also the mark XENAPP, which is used as both a standalone mark and in combination with Complainant's house mark as CITRIX XENAPP.
Continuously since that time, Complainant has used the XENAPP and XEN Marks in connection with products and services that address the evolving trends and technologies in the virtualization space. Currently, hundreds of thousands of organizations worldwide rely on Complainant to help them build simpler and more cost-effective information technology environments enabling virtual work and data centers. As part of this business, Complainant partners with over 10,000 companies worldwide in more than 100 countries.
Complainant has made and continues to make substantial investments to develop and promote the goodwill associated with its XENAPP and XEN Marks. In the USA alone, Complainant spends millions of dollars marketing its XENAPP and XEN branded products and services, resulting in widespread and substantial sales of products and services designated by the XENAPP and XEN Marks throughout the USA and worldwide.
Complainant has developed a robust worldwide trademark portfolio, with applications and registrations for the XEN Marks in nearly 50 countries. Attached to the Complaint are copies of a selection of the registration certificates for Complainant's XEN Marks including registrations for XENAPP and CITRIX XENAPP.
As of the date of the Complaint, the Disputed Domain Name resolved to a site that purported to offer a variety of software and information technology services using the trade name and trademark Xenapp Solutions. Respondent, which is not associated or affiliated with Complainant, has not been authorized to use or incorporate any of Complainant's marks into its domain name. Respondent's use of the Disputed Domain Name is deceptive and misleading inasmuch as it wholly incorporates Complainant's XENAPP Mark combined with the generic term "solutions" (and the additional letter "c") suggesting that Respondent's websites are authorized sites for XENAPP branded products and services. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Panel finds that Complainant has met each of the elements required by the Policy: In particular, the Disputed Domain Name is confusingly similar to Complainant's marks, Respondent has no rights or legitimate interests in the Disputed Domain Name, and Respondent has registered and is using it in bad faith. A. Identical or Confusingly Similar
Complainant has made extensive use of the XENAPP and XEN Marks in connection with its virtualization and computing services, and has obtained trademark registrations in the USA and throughout the world.
The inclusion of the entire XENAPP trademark in the Disputed Domain Name, adding only the term "solutions" (plus the letter "c" which has no evident significance), results in a domain name which, taken as a whole, is confusingly similar to Complainant's marks. In particular, it is well established that the addition of a common descriptive word to a distinctive brand name does not distinguish or diminish the risk of confusion. See Citrix Systems, Inc. v. WhoisProtectS ProtectService, Ltd. / Alexandr golounin,WIPO Case No. D2014-0250 (transferring to Complainant); Citrix Systems, Inc. v. Catchway Technologies,WIPO Case No. D2011-0973 (transferring to Complainant); Citrix Systems, Inc. v. Jing Wu,WIPO Case No. D2012-1935 (transferring to Complainant); Citrix Systems, Inc. v. Citirx Software Solutions,WIPO Case No. D2011-0957 (transferring and to Complainant); see also PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services,WIPO Case No. D2001-0174; Sony Kabushiki Kaisha v. Kil Inja,WIPO Case No. D2000-1409; America Online, Inc. v. Chris Hoffman,WIPO Case No. D2001-1184.
Here, the descriptive word "solutions" that was added to Complainant's marks is descriptive of the goods and services provided by Complainant in connection with those marks and therefore only increases, rather than mitigates, the risk of confusion. The additional letter "c" is too insignificant, in the context of the mark as a whole, to have any impact on the confusion analysis.
In short, the Disputed Domain Name is confusingly similar to Complainant's marks. B. Rights or Legitimate Interests
Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the XENAPP or XEN Marks in a domain name or in any other manner.
Moreover, the Disputed Domain Name resolves to a web site that purports to offer services that compete with Complainant's, thereby making clear that Respondent was well aware of Complainant and its goods and services, when it adopted and used the Disputed Domain Name.
Offering services that are either in direct competition with Complainant or as a means of committing fraud upon customers who think that they are dealing with Complainant is not a bona fide offering of goods or services. See, e.g., FIL Limited v. , Domain Discreet Privacy Service / Igor Ivanov,WIPO Case No. D2014-0131.
Respondent does not rebut the above showing or make any contrary claim or assertion.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
As explained above, Respondent must have been aware of Complainant and its goods and services at the time that it registered a domain name that contained Complainant's marks and used it to resolve to a web site that also used Complainant's marks and purported to offer competing goods and services.
Accordingly, Respondent registered the Disputed Domain Name in bad faith and with full knowledge of Complainant's rights in the XENAPP and XEN Marks.
It is simply inconceivable that Respondent could have been unaware of Complainant's rights in the XENAPP and XEN Marks when it registered the Disputed Domain Name that wholly incorporates Complainant's federally registered and well-known XENAPP mark and made the above-described use of it. Even if the similarity in the marks and uses were not alone sufficient, Complainant's extensive advertising, including Internet, radio, and print advertising, featuring its name and mark throughout the USA and Canada, as well as prominently on the Internet, would have revealed that the XENAPP and other XEN Marks are used in commerce by Complainant.
The above registration and use of the Disputed Domain Name were clearly intended to, and likely had the effect of, trading on the goodwill associated with Complainant and its XENAPP and XEN brands, and to confuse consumers into believing that Respondent or its goods or services were affiliated with Complainant.
Respondent has not rebutted the above showing in any way.
Accordingly, the Panel concludes that Complainant has met its burden of proving that the Disputed Domain Name was registered and is being used in bad faith. 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 Complainant
Michael Albert
Sole Panelist
Date: May 11, 2015
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