Complainant is VMware, Inc. of Palo Alto, California, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is James of Jackson, Missouri, United States. . The Domain Name and Registrar
The disputed domain name (the “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 January 17, 2019. On January 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 17, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 13, 2019.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on February 18, 2019. 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 is a global provider of cloud infrastructure services, incorporated in the United States in 1998 and serving 500,000 customers worldwide. Complainant reports 2017 revenues of USD 7.9 billion. In 2004, Complainant became a subsidiary of EMC Corporation, which ranks 139 in the Fortune 500.
Complainant is the proprietor of trademark registrations containing the VMWARE in a number of countries, including the following:
- United States trademark No. 2491236 for VMWARE (word mark) in class 16, registered on September 18, 2001;
- United States trademark No. 2491237 for VMWARE (word mark) in class 25, registered on September 18, 2001;
- United States trademark No. 2764540 for VMWARE (word mark) in class 9, registered on September 16, 2003;
- United States trademark No. 3345331 for VMWARE (word mark) in classes 41 and 42, registered on November 27, 2007;
- European Union trademark No. 001333178 for VMWARE (word mark) in classes 9, 16 and 25, registered on May 21, 2001;
- European Union trademark No. 014501316 for VMWARE (word mark) in classes 41 and 42, registered on December 17, 2015.
Complainant is the registrant of the domain name , created on November 17, 2009, and uses this domain in connection with its business. According to information provided by Complainant, this website received over 16 million unique visitors from June to November 2018 and received a global rank of 3,381 and a country rank in the United States of 2,712.
The Domain Name was registered on September 27, 2018. As of the date of the filing of the Complaint, the Domain Name was not being used in connection with an active website. 5. Parties’ Contentions A. Complainant
Complainant contends that each of the three elements specified in paragraph 4(a) of the UDRP are satisfied in this dispute.
In relation to the first element, Complainant contends that it is the proprietor of the VMWARE trademark, and that the Domain Name is identical and confusingly similar to this trademark. The Domain Name differs from the trademark only by the addition of a geographical term and by the addition of a hyphen, which do not sufficiently differentiate the Domain Name from the trademark.
In relation to the second element, Complainant contends that it has supplied prima facie evidence of the validity of the term VMWARE as a trademark, of Complainant’s ownership of this trademark and of Complainant’s exclusive rights to use the VMWARE trademark in commerce. Respondent is not sponsored by nor affiliated with Complainant in any way, nor has Respondent received permission from Complainant to use the trademarks. Respondent, identified only as “James,” is not known by the Domain Name. The Domain Name resolves to a blank page, and Respondent has therefore not demonstrated any attempt to make legitimate use of the Domain Name. Respondent registered the Domain Name significantly after Complainant established trademark rights in VMWARE.
In relation to the third element, Complainant contends that bad faith registration and use of the Domain Name is established by the following. At the time of registration of the Domain Name, Respondent knew or should have known of Complainant’s trademark. Complainant employs 21,700 employees serving 500,000 customers worldwide, including 100% of the Fortune 100, and 55,000 partners worldwide. Complainant’s customers include some of the world’s largest companies. Internet searches for “uk vmware” returned multiple results referencing Complainant.
Respondent’s passive holding of the Domain Name containing an infringing trademark amounts to bad faith, and is indicative of an intention to hold the Domain Name for some future activity that would be detrimental to Complainant. Any actual use in the future would be in bad faith. Respondent holds registrations for at least four other domain names that misappropriate the trademarks of well-known brands, demonstrating a pattern of conduct demonstrative of bad faith. Respondent has failed to respond to Complainant’s cease-and-desist letters. Taken together, the circumstances support a finding of registration and use in bad faith.
Complainant requests transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the reasonable contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the mark VMWARE, through trademark registrations at least in the United States and European Union, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.2.1.
In comparing Complainant’s trademark with the Domain Name, the Panel finds that the Domain Name wholly incorporates Complainant’s VMWARE trademark, and that the Domain Name is therefore confusingly similar to Complainant’s trademark for purposes of UDRP standing. The addition of the geographic prefix “uk” does not prevent a finding of confusing similarity under the first element (see Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768).
It is the consensus view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview, Section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that the materials in the case file indicate that Respondent is not an agent or an employee of Complainant, nor is Respondent a licensee or a subsidiary thereof. There is no evidence that Respondent, indicated only as “James”, is commonly known by the Domain Name. The Domain Name resolves to an inactive website and no information is provided on what rights or legitimate interests Respondent may have in the Domain Name. The Domain Name was registered significantly after the registration of the VMWARE trademark in the USPTO and after Complainant’s first use in commerce of its trademark on May 5, 1999.
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see L’Oreal v. Zhao Jiafei,WIPO Case No. D2015-1458). The Respondent has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of fair use of Complainant’s trademark.
The Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Considering the longstanding and global use of Complainant’s trademark, the distinctive nature of Complainant’s trademark and the high degree of similarity between Complainant’s VMWARE trademark and the Domain Name, the Panel finds that there is no plausible legitimate explanation for registering the Domain Name, nor is it plausible that Respondent was unaware of Complainant’s trademark at the time of registration. The Domain Name is not a chance collection of letters, but contains an unaltered reproduction of Complainant’s trademark preceded by a geographic prefix indicating the United Kingdom.
At first impression, however, the evidence presented does not initially present a clear-cut case that the Domain Name is being used in bad faith. The Domain Name resolves to an inactive website. Respondent has not populated the website in any way, nor is there evidence that Respondent tried to sell the Domain Name to Complainant or any other party, nor is there evidence that Respondent is attempting to disrupt the business of Complainant.
In this case, it is necessary to evaluate whether the circumstances of Respondent’s inaction amount to registration and use of the Domain Name in bad faith. Referring to factors such as those set out in the Telstra decision (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), the Panel holds that the circumstances support a finding of registration and use in bad faith.
The Panel’s reasoning is based on the following. First, Complainant’s trademark is distinctive and has a strong reputation, and Respondent has provided no evidence of actual or contemplated good-faith use thereof. Second, Respondent is identified only by a given name, thereby concealing his or her true identity. Third, Respondent has failed to respond to three cease-and-desist letters by Complainant, and has failed to respond to the Complaint. Finally, there is no plausible good-faith use to which the Domain Name may be put by Respondent. The information provided in the case materials, which Respondent did not refute, suggested that Respondent’s other domain name registrations indicate a pattern of bad faith activity.
The Panel concludes that Complainant has established the third element under paragraph 4(a)(iii) 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 Complainant.
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: March 4, 2019
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