The Complainant is Symantec Corporation of Mountain View, California, United States of America (“United States”) represented by Donahue Fitzgerald LLP, United States.
The Respondent is Alma Shabake, Alma of Tehran, Islamic Republic of Iran (“Iran”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2015. On December 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 7, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2015. On December 21, the Respondent submitted an informal communication. No formal response was received and the Center sent a procedural update on January 4, 2016, notifying the Parties that an Administrative Panel shall be appointed.
The Center appointed Dawn Osborne as the sole panelist in this matter on January 15, 2016. 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 trade mark registrations for its SYMANTEC mark around the world, including in the United Arab Emirates since 2006, having used this mark in commerce, for software and related goods and services since 1985 in the United States.
The Domain Name was registered in 2014. It has been used for a site that purports to be a distributor of the Complainant in Iran, makes prominent use of the Complainant’s SYMANTEC trade mark and one of its registered logo marks without authorization and offers third party products including products that compete with the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
Since 1985 the Complainant has continuously used its SYMANTEC mark in connection with its commercial offering to the public of licensed copies of computer security software programs, associated user manuals, related documentation and services. It has incorporated its SYMANTEC mark into the name of nearly every one of the security products and services it has developed and distributed around the globe. It has almost 200 trademark registrations from dozens of countries around the world incorporating the SYMANTEC mark, including registrations in the United States dating back to 1991 and registrations in the United Arab Emirates dating back to 2006. The Symantec Trade Mark usage guidelines prohibit third parties such as the Respondent from incorporating the SYMANTEC mark into any domain name or business name.
The Complainant is not affiliated with and has never endorsed or sponsored Respondent, Respondent’s website or Respondent’s business. Respondent’s website attached to the Domain Name purports to sell software products manufactured by the Complainant and various third parties such as Microsoft Corporation, Cyberoam Technologies, GFI Software and VMWare Inc. Some of the third parties products advertised on the Respondent’s website compete in the marketplace with products manufactured and distributed by the Complainant. There is a tagline at the bottom of the landing page in Respondent’s Website, stating “Alma Co. Design@ - Iran Symantec Distributor”.
The Complainant also owns registrations around the world for a composite trade mark depicting a checkmark in a circle next to the word “Symantec” (“the Checkmark trade mark”). Respondent has used a large copy of the Checkmark trade mark on its site attached to the Domain Name.
The Respondent, by registering the Domain Name, has willfully attempted to mislead and confuse customers into falsely believing that Respondent or its website and business are associated with the Complainant when the Complainant would not be allowed to do business in Iran due to United States law and this misrepresentation is damaging to the reputation of the Complainant.
The Domain Name wholly incorporates the Complainant’s SYMANTEC mark. A domain name consisting only of the Complainant’s mark plus another name where the trade mark is the dominant component of the domain name does nothing to dispel the connection in the public mind between the use of the mark and the Complainant. The addition of a generic Top-Level Domain (“gTLD”) is irrelevant to a Policy paragraph 4(a)(i) analysis of identity or confusing similarity.
The Complainant has never authorized the Respondent to use the SYMANTEC mark in the Domain Name or otherwise.
The contents of the Respondent’s website attached to the Domain Name and the co-opting of marks owned by the Complainant such as the Checkmark trade mark prove that at all relevant times the Respondent was keenly aware of Complainant’s rights. The Respondent has not used the Domain Name in connection with a bona fide offering of goods. Instead the Respondent is generating traffic to the Respondent’s website by misleading consumers looking for the Complainant and claiming to be the Complainant’s distributor in Iran by using the Domain Name and the Checkmark trade mark. Such confusing commercial use cannot be “legitimate” under the Policy. The Domain Name is being used as part of a bait and switch strategy to sell third party products, some of which compete directly with the Complainant’s products.
No evidence suggests that the Respondent has ever been commonly known by the Domain Name or the SYMANTEC mark. The inclusion of the Respondent’s first name “Alma” is not enough to show it is commonly known by the Domain Name which contains the SYMANTEC mark.
Since the use made of the Domain Name is commercial it cannot be fair use under Policy paragraph 4(c)(iii).
The Respondent intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation of its website and the products on that website. It is suggesting it is the Complainant or a subsidiary or affiliate of the Complainant. Selling third party competing products on the site attached to the Domain Name is also a clear indication of bad faith. Suggesting the Complainant is operating in Iran in violation of United States law also damages the reputation of the Complainant and falsely implying violation of laws is also sufficient evidence of bad faith registration and use under the Policy. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions, but claimed in an informal communication that its activities were legal that it offers software from a variety of companies, and that it did not represent itself as a partner of the Complainant. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or confusing similarity
The Complainant has trade mark registrations for SYMANTEC with first use in commerce for software and related goods and services recorded as of 1985. The Domain Name consists of the Complainant’s SYMANTEC registered trademark and the name “Alma”. The SYMANTEC mark will be recognised by the public as the mark of the Complainant, particularly in the context of the software industry. The addition of the name “Alma” does not prevent the confusing similarity of the Domain Name with the Complainant’s SYMANTEC trade mark. Accordingly, the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a formal Response. It has no consent from the Complainant, has not used the Domain Name for a bona fide offering of goods and services given the confusing use and use to sell competing goods, as discussed below, and is not commonly known by the Domain Name. Nor is it making noncommercial fair use of it. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a domain name containing the Complainant’s SYMANTEC trade mark with only the additional name “Alma” added and to use it in the context of software, the industry in which the Complainant operates. Further, in the opinion of the Panel the use made of the Domain Name is deceptive. The site to which it points purports that it is connected with the Complainant, as it suggests it is a distributor in Iran when, in fact, it is not so connected and the Complainant could not operate in Iran without breaching the laws of the United States.
The website attached to the Domain Name suggests it is an official site of the Complainant including use of false statements to that effect and use of the Complainant’s SYMANTEC word mark and its Checkmark trade mark logo. As such the Panel finds that the Domain Name has been used in a way likely to confuse people into believing the Domain Name was registered to or connected to the Complainant. The use of the Complainant’s word and logo trade marks on the site and the sale of third party software competing with the Complainant’s shows that the Respondent is well aware of the Complainant, its trade marks, business, services and goods.
In the absence of a formal Response from the Respondent or other compelling argument or evidence beyond that submitted by the Respondent, considering the fame of the Complainant and the material attached to the Domain Names the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its website and goods and services sold on its site are connected to the Complainant.
It is also well established under the Policy that to use a trade mark in a domain name and associate it with illegal or improper activity, in this case the conduct of business in Iran, is also a clear indication of registration and use in bad faith.
As such the Panel finds that the Domain Name has been registered and used in bad faith satisfying 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.
Dawn Osborne
Sole Panelist
Date: January 29, 2016
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