Complainant is Citrix Systems, Inc., United States of America (“United States” or “U.S”), represented by Day Pitney LLP, United States.
Respondent is Office Official, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2019. On August 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2019, 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 August 27, 2019 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 and an amendment to the amended Complaint on August 29, 2019.
The Center verified that the Complaint together with the amended Complaint and an amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 30, 2019.
The Center appointed Anne Gundelfinger as the sole panelist in this matter on October 9, 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 Citrix Systems, Inc. Since 1989, Complainant has been an industry leader and worldwide provider of computer software systems and related system services in the nature of networking and server software, desktop virtualization systems, software-as-a-service, cloud computing technologies and mobility solutions. Complainant’s products and services are currently used by more than 400,000 organizations and over 100 million people worldwide.
Complainant owns trademark registrations in numerous countries around the world for the CITRIX word and device marks, including (but not limited to) the following registrations in the United States and the European Union (“EU”), with registration dates ranging from as early as May 5, 1992 to January 8, 2019 (hereafter “CITRIX Trademarks”):
CITRIX (European Union Trade Mark (“EUTM”) Reg. No. 000056093), covering goods and services in International Classes 9, 16, and 42;
CITRIX (EUTM Reg. No. 002302511), covering goods and services in International Classes 9, 16, 35, 37, 41, and 42;
CITRIX (EUTM Reg. No. 004103594), covering goods in International Classes 6, 9, 16, and 25;
CITRIX (EUTM Reg. No. 014944111), covering goods and services in International Classes 9, 16, 25, 35, 37, 38, 39, 40, 41, 42, and 45;
CITRIX (device) (EUTM Reg. No. 001032002), covering goods in International Class 9;
CITRIX (U.S. Reg. No. 5645864), covering goods and services in International Classes 9, 16, 25, 35, 37, 38, 39, 40, 41, 42, and 45;
CITRIX (U.S. Reg. No. 3674455), covering goods in International Class 9;
CITRIX (U.S. Reg. No. 2540187), covering goods in International Class 9;
CITRIX (U.S. Reg. No. 1685759), covering goods in International Class 9;
CITRIX (U.S. Reg. No. 2517278), covering services in International Class 41;
CITRIX (U.S. Reg. No. 2515233), covering services in International Class 35; and
CITRIX (device) (U.S. Reg. No. 2334561), covering goods in International Class 9.
Complainant also owns and uses the domain name which resolves to Complainant’s corporate website where Complainant’s CITRIX mark is prominently used and displayed.
The disputed domain name was registered on July 3, 2019 using a privacy protection service. It currently resolves, and has resolved throughout the timeframe of this proceeding, to an inactive webpage. 5. Parties’ Contentions A. Complainant
Complainant’s contentions include the following:
Complainant contends, and has submitted credible unrebutted evidence, that Respondent has used the disputed domain name solely to facilitate an email-based fraud scheme. Specifically, Complainant asserts that it first became aware of the disputed domain name when its employees began receiving phishing emails from an account using the domain to impersonate Complainant’s Senior Digital Sales Manager, using the email address “[...]@” and using a signature block with that person’s name (slightly misspelled), title, and address, as well as the CITRIX logo. Complainant submitted one such email into evidence, which email was sent approximately two weeks after the registration of the disputed domain name. According to Complainant, the name used is the name of an actual employee of Complainant, but this individual did not send the emails in question. Rather, Complainant contends that Respondent was impersonating a manager of Complainant to pursue a phishing scheme and to solicit fraudulent payments for travel at the expense of Complainant.
Complainant submits that the CITRIX mark is coined with no meaning other than to refer to Complainant, and is famous and well-known. Complainant further submits that the CITRIX Trademarks are active, valid, and subsisting, and have been continuously used in the EU and U.S. in connection with its software goods and services since at least as early as 1996.
Complainant argues that the disputed domain name is confusingly similar to its CITRIX Trademarks because (a) the disputed domain name wholly incorporates the CITRIX mark, and (b) the addition of the descriptive term “US” does not distinguish the disputed domain name from Complainant’s marks, but rather increases the potential for confusion by referencing the geographic location of Complainant’s offices and headquarters.
Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent owns no trademark registrations for the disputed domain name, is not commonly known by the disputed domain name, has no relationship with Complainant, is not licensed or otherwise permitted by Complainant to use the disputed domain name, and is not making a legitimate noncommercial or other fair use of the disputed domain name. Complainant asserts that the disputed domain name resolves to an inactive website, and that the disputed domain name has been used solely for an email fraud scheme, which use clearly does not establish any right or legitimate interest.
Finally, Complainant argues that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered on July 3, 2019, decades after the Complainant commenced use of and established rights in the CITRIX mark. Complainant asserts that Respondent’s use of a privacy protection service and apparently inaccurate registration information constitutes additional evidence of bad faith registration. Moreover, Respondent’s use of the disputed domain name to send phishing emails impersonating an actual employee of Complainant clearly establishes Respondent’s knowledge of Complainant and its trademark rights at the time of registration of the disputed domain name. Finally, by using the disputed domain name in this fashion, Respondent intentionally attempted to attract, for commercial gain, payment from Complainant’s employees, by creating a likelihood of confusion between Complainant’s Trademarks and the source or affiliation of the fraudulent emails, and thereby used the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove the following three elements in order to be successful in its action:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has well established trademark rights in the U.S., EU, and around the world in the CITRIX mark, which has been widely used for well over two decades. The disputed domain name incorporates the CITRIX trademark in its entirety, and appends the geographic term “US” to the front of the disputed domain name, separated from the CITRIX element by a hyphen. Prior UDRP panels have consistently held that the addition of a dictionary or descriptive term to a complainant’s mark would not prevent a finding of confusing similarity between a domain name from that mark. See, section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. See also, Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287. Similarly, the addition of the generic Top-Level Domain “.com” is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test.
Accordingly, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s CITRIX Trademarks, and that the first element of the test is satisfied. B. Rights or Legitimate Interests
It is well-established that a complainant needs only to present a prima facie case in relation to the second element of the test, and that once such a showing is made, the burden shifts to the respondent to prove that it possesses rights or legitimate interests in the disputed domain name. See Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith,WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; MatchNet plc. V. MAC Trading,WIPO Case No. D2000-0205.
Here, Complainant has convincingly demonstrated its global rights in, as well as its decades-long use of CITRIX, a coined and well known mark. While this alone would generally be sufficient to infer Respondent’s knowledge of Complainant’s rights, here it is not necessary to make such an inference, because Complainant has demonstrated with credible unrebutted evidence that Respondent used the disputed domain name to send phishing emails for apparent commercial gain using the name, title, and address of a Complainant’s employee, as well as the CITRIX logo. Of course, such use can never give rise to any right or legitimate interest on the part of Respondent in the disputed domain name (see section 2.13 of the WIPO Overview 3.0). Moreover such use establishes Respondent’s knowledge of Complainant’s rights.
Complainant has further asserted that Respondent owns no trademark registrations for the disputed domain name, is not commonly known by the disputed domain name, is not making a legitimate fair use of the name, and further that Complainant has no relationship with Respondent and has not licensed or otherwise permitted Respondent’s use of the disputed domain name.
In the absence of a response from Respondent, the Panel accepts Complainant’s evidence and assertions, and finds that Complainant has made a prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain name. Accordingly, the Panel concludes that Complainant has met its burden and that the second element of the test is satisfied. C. Registered and Used in Bad Faith
The third element of the test requires a showing that the disputed domain name has been registered and is being used in bad faith. As previously concluded, the disputed domain name is confusingly similar to the Complainant’s distinctive, well-established, decades-old CITRIX trademark. Given the foregoing, and the fact that Respondent used the disputed domain name to send misleading phishing emails impersonating an actual employee of Complainant only a couple of weeks after registration of the disputed domain name, one can only fairly conclude that Respondent was clearly aware of Complainant’s rights in the CITRIX mark when registering the disputed domain name. This suffices to establish bad faith registration. See, paragraph 4(b)(iv) of the Policy; and section 3.1.4 of the WIPO Overview 3.0. While not necessary to the finding, Respondent’s use of a privacy protection service and its apparently false registration information further support a finding of bad faith registration.
Turning to bad faith use, while the disputed domain name resolves only to an inactive website, the phishing emails that Respondent sent using the disputed domain name represent an attempt to impersonate an employee of Complainant and mislead recipients into providing valuable information, apparently for commercial gain. Such use of the disputed domain name clearly constitutes use in bad faith. See Facebook, Inc. v. WhoisGuard, Inc. / Donna E. Fleming, Mansmann’s Department Store,WIPO Case No. D2019-1777.
Accordingly, the Panel concludes that the disputed domain name was registered and has been used in bad faith, and that the third element of the test is satisfied. 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.
Anne Gundelfinger
Sole Panelist
Date: October 23, 2019
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