The Complainant is Cylance Inc., United States of America (“United States”), represented by Davis Wright Tremaine LLP, United States.
The Respondent is Domain Email, United States / Patrick Wolfe, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 16, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 17, 2020. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2020. A Response was filed with the Center on May 12, 2020 by Patrick Wolfe. The Response was not sent from an email address known to belong to the Respondent, and the Center sent requests on May 13 and May 18, 2020, requesting that the person who submitted the Response “identify herself or himself, clarifying his relationship (if any) to the Respondent, and provide information to establish the legitimacy of her/his request/submission in the context of the current proceedings”. The Center received no such identification, clarification or other requested information, and proceeded with the panel appointment. The Center appointed Evan D. Brown as the sole panelist in this matter on May 26, 2020. 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. On May 26, 2020, counsel for the Complainant sent an email to the Center requesting that the Center advise the Panel concerning the lack of any relationship between the Complainant and the Respondent. 4. Factual Background The Complainant was founded in 2012 and is in the business of computer security services that utilize artificial intelligence. It owns numerous trademark registrations for CYLANCE in several countries around the world, including United States Reg. No. 4,589,223, registered on August 19, 2014. The Respondent registered the disputed domain names on February 8, 2016. Both of the disputed domain names resolve to the same website, located at “www.cylanceav.com”. At that website, the Respondent publishes a website titled “Cylance Smart Antivirus” that provides information about computer security products and services. The Respondent’s web page purportedly offers the Complainant’s security software for sale, and uses the Complainant’s word mark CYLANCE and related design mark. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith. B. Respondent The Respondent makes a number of claims, a few of which are relevant to the dispute, namely: - The Respondent became a formal employee of the Complainant after registering the disputed domain names. - While working for the Complainant, the Respondent was a “top ranked sales representative” for the Complainant, before leaving the company in early 2018. - The Respondent did not use the disputed domain names in any commercial fashion while employed by the Complainant. - The Respondent offered to let the Complainant use the disputed domain names to grow the Complainant’s business units internally, but the Complainant did not accept such offer. - After working for the Complainant, the Respondent worked for Cyberforce Security (“Cyberforce”), one of the Complainant’s distributors and resellers, as evidenced by a copy of an Independent Sales Representative Agreement dated November 8, 2017, between the Respondent and Cyberforce. - Cyberforce’s owner got permission from the Complainant’s legal counsel (though not one of the attorneys representing the Complainant in this case) to distribute and sell the Complainant’s technology using the disputed domain names. - The Respondent is being unfairly and unlawfully targeted because the Complainant has not paid the amounts the Respondent requires to sell the disputed domain names. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Preliminary Matter – Identity of Respondent After receiving the initial Complaint, the Registrar identified the Respondent as “Domain Email”. This appears to be a bogus name. But a man calling himself Patrick Wolfe stepped up to respond to the Complaint. One may reasonably wonder whether this person actually is the registrant of the disputed domain names. It would have been helpful if Mr. Wolfe responded to the Center’s request of May 13, 2020, that he identify himself and clarify his relationship with the Respondent. But the Panel finds anyway, based on the information in the record and an evaluation of the circumstances, that Mr. Wolfe is the registrant of the disputed domain names, and is the proper Respondent in this case. Mr. Wolfe claims ownership of the disputed domain names in the Response (“I have owned these domains for almost five years [...]”). The fact that he undertook the effort to file a Response indicates his interest in the disputed domain names – a party who would not be affected by the outcome of this dispute would have no meaningful incentive to do that. And in any event, the Complainant appears to not take issue with Mr. Wolfe being the Respondent. In its email to the Center of May 26, 2020, the Complainant did not dispute that Mr. Wolfe is the Respondent, but instead disavowed any relationship between Mr. Wolfe and the Complainant. Accordingly, the Panel will treat the Response that Mr. Wolfe filed as originating with the true Respondent in this case. B. Identical or Confusingly Similar A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown ownership in the registered CYLANCE mark as noted above. The disputed domain names incorporate the Complainant’s exact mark, CYLANCE, in its entirety. This creates confusing similarity in this situation. The addition of other letters or words – in this case “av” and “guard” – do not eliminate the confusing similarity. The Complainant has established this first element under the Policy. C. Rights or Legitimate Interests The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. The Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain names. On this point, the Complainant asserts that the Respondent’s choice in registering the disputed domain names cannot be explained but as a misappropriation of the Complainant’s trademark. Moreover, according to the Complainant, there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could legitimately use the disputed domain names. Further, the Complainant asserts that the Respondent is not commonly known by the disputed domain names, nor is it making a noncommercial or fair use of the Complainant’s trademark. These facts establish the Complainant’s prima facie showing. The Respondent has not provided any basis on which that showing may be overcome. Even though the Respondent claims to have become an employee of the Complainant, there is no assertion – let alone evidence – that he was given authorization to register the disputed domain names. The Respondent asserts that while employed by the Complainant, he did not use any of the disputed domain names in a commercial fashion. And he asserts that he made direct offers to “allow” the Complainant to use the disputed domain names. The fact that that disputed domain names were not used for any legitimate commercial purposes while the Respondent worked for the Complainant supports the idea that the Respondent was never authorized to register or use them in the first place. It is reasonable to think that had the Complainant authorized the registration and use of the disputed domain names while the Respondent worked for the Complainant, the disputed domain names would indeed have been used as the Respondent suggested they should. The Panel does not find persuasive the Respondent’s assertions that he had permission by virtue of his employment with Cyberforce to use the disputed domain names. Nothing in the Independent Sales Representative Agreement between the Respondent and Cyberforce grants that permission, whether expressly or by implication. In fact, that agreement effectively bars any such argument by the Respondent. Section 2 of the agreement provides, among other things, that nothing in the agreement shall be held or constructed to establish any agency or other relationship between the parties other than as expressly set forth in the agreement. Nothing in the agreement expressly granted the Respondent the ability to register or use domain names that contain the trademark of one of Cyberforce’s customers (namely, the Complainant). Section 15 of the agreement requires that any modification of the scope of the Respondent’s authority would have to have been agreed in writing. The Respondent has not offered any evidence of that sort. The Complainant has established this second element under the Policy. D. Registered and Used in Bad Faith The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”. The Respondent does not deny that it had the Complainant in mind when it registered the disputed domain names. The circumstances show that the Complainant intentionally targeted the Complainant and its products by the registration and use of the disputed domain names. Using the disputed domain names to set up a website that flagrantly trades off of the goodwill of the Complainant, and likely confuses Internet users as to the source of the website, is a clear example of bad faith use. Other activities of the Respondent, for example, using a privacy service and bogus contact information, show bad faith. And based on the Response, it appears the Respondent has tried to sell the disputed domain names to the Complainant for an amount exceeding the Respondent’s out-of-pocket costs. For these reasons, the Complainant has shown the Respondent’s bad faith registration and use of the disputed domain names. 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 names Evan D. Brown
Sole Panelist
Date: June 15, 2020
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