The Complainant is Symantec Corporation ("Symantec") of Mountain View, California, United States of America, represented by Donahue Fitzgerald, United States of America.
The Respondent is Hamed Naddaf of Dubai, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 8, 2015. On April 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2015, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the disputed domain name was first registered on August 12, 2009;
(d) the language of the Registration Agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 April 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 5, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 11, 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
The Complainant has been offering computer security software and associated documentation and services under the trademark SYMANTEC since 1985. According to the Garibaldi declaration filed with the Complaint, the Complainant has almost 200 registered trademarks incorporating the word SYMANTEC in dozens of countries. These include US Trademark Registration No 1654777 for SYMANTEC in respect of computer programs and services in International Classes 9 and 38, registered on August 27, 1991 and No. 2,964,259 for SYMANTEC for clothing and headwear; Trademark Registration Nos 84694 and 84695 in the United Arab Emirates registered on June 11, 2006 and Community Trademark Registration Nos 002694883, 004145231, 009422908, 009422932, 009577438, 009839549, 010048072 and 010610889. CTM No. 002694883 is for a figurative version of SYMANTEC for a range of computer related goods and services in International Classes 9, 16 and 42 and wash registered on September 9, 2003; CTM No. 004145231 is for SYMANTEC in respect of goods in International Classes 9 and 25 and was registered on July 29, 2010.
The Complainant says it has sold millions of copies of its software by reference to trademarks incorporating SYMANTEC and has spent millions of dollars in advertising and promoting it.
According to the Registrar, the disputed domain name was registered in August 2009. It resolves to a website which appears to promote the sale of the Complainant's products in addition to the products of other software vendors including Microsoft. While the Respondent has described the website in an email to the Complainant (sent prior to the commencement of the current proceeding) as an information site, it does in fact include an order form page. 5. Discussion and Findings
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
As discussed in section 4, the Complainant has proven ownership of the trademark SYMANTEC as both a plain word mark and as part of a figurative mark featuring a device of a "tick".
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the ".com" component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252. Accordingly, the disputed domain name differs from the Complainant's word mark solely by the addition of the word "Iran" at the start of the domain name. The addition of this geographical element to the Complainant's trademark does not dispel any risk of confusion. The word "Symantec" is also the dominant element of the figurative mark and so the disputed domain name is confusingly similar to it for the same reasons.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. On the contrary, according to the Complainant it is prohibited from selling or promoting its products in Iran by the United States Export Administration Regulations and the United States Department of Commerce Denial and Probation Orders and so it emphatically has nothing to do with the Respondent or the Respondent's activities.
The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
These factors are sufficient to raise the required prima facie case against the Respondent. The Respondent's website does appear to be offering for sale genuine products of the Complainant's computer software. It is not clear from the record how the Respondent obtains these products. The Complainant advances a number of reasons why this does not confer rights or legitimate interest in the disputed domain name under the Policy. These include the prohibition under United States law on exporting or otherwise supplying the Complainant's products to Iran, the extent of use of the Complainant's trademarks and other indicia on the Respondent's website and the failure to make the absence of any relationship between the Complainant and the Respondent sufficiently clear on the Respondent's website.
In the present case, however, it is sufficient to note that the Respondent's website does not just offer for sale the Complainant's products, but also offers for sale products from Microsoft and VMware, including Microsoft's Forefront Threat Management Gateway software which the Complainant says directly competes with the Complainant's products. Much of the Respondent's website does appear to relate to the Complainant's products, albeit not just its SYMANTEC brand products. The Microsoft and VMware products, however, make up a significant part of what is being offered for sale. They could not be described as incidental or insubstantial. The use of the Complainant's trademark in the disputed domain name for a website that is offering for sale third party products like this is clearly established as not a bona fide offering for sale of goods or services under the Policy1 .
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey LtdWIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The use the Respondent has been making of the disputed domain name, described above, constitutes use in bad faith under the Policy.
The trademark SYMANTEC is, so far as the Panel can ascertain, an invented or fancy word. It is not descriptive or generic or the name of a geographic place. That is, it has significance only as identifying the Complainant and as a trademark for its products. It is not a word one would expect a trader in computer programs and associated goods and services to adopt without any knowledge of the Complainant and its products. The nature of the Respondent's website shows the Respondent is well aware of the Complainant and its products. It is most unlikely the Respondent only became aware of the Complainant and its trademarks after registering the disputed domain name as if the resemblance were some sort of happy coincidence. Moreover, an email the Respondent sent to the Complainant in February 2015 reveals that the Respondent was well aware of the Complainant, its products and the ban under United Sates law against supplying the Complainant's products to Iran as early as 2010; that is, shortly after the disputed domain name was registered. In these circumstances, the Panel infers that the Respondent registered the disputed domain name to use it in the way it has been used. Accordingly, the Panel finds the disputed domain name was registered in bad faith. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: May 25, 2015
1 The often cited case Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, for example, characterizes this type of use of a domain name as a "bait and switch".
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