Complainant is Bitdefender IPR Management Ltd., Cyprus, represented by Simion & Baciu Intellectual Property Counseling SRL, Romania.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States” or “US”) / Vesecure, Baldeep Singh, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2020. On May 19, 2020, the Center transmitted to the Registrar a request by email for the registrar verification in connection with the disputed domain name. On May 19, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details 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 the Complainant on May 28, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant amended the Complaint on May 31, 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 Respondent of the Complaint, and the proceedings commenced on June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. Respondent sent brief emails on May 28, 2020 and, June 2, 2020, however, no formal Response was submitted. Accordingly, on July 7, 2020, the Center notified the parties of the commencement of the panel appointment process. The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 27, 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. 4. Factual Background Complainant is a company evolving in the field of security software and anti-virus applications and support since 2001. Bitdefender is selling its products under the “Bitdefender” house brand and other “Bitdefender”-formative marks in over 150 international jurisdictions. To this end, Complainant owns various trademarks, namely: - European Union Trade Mark (“EUTM”) BITDEFENDER CENTRAL No. 017924593 filed for protection on June 29, 2018 and registered on November 29, 2018; Complainant also has several domain names pointing to its official websites. - Respondent is Vesecure, Baldeep Singh, India. Respondent sent brief emails prior to the beginning of proceedings, however, no formal Response was submitted. The disputed domain name was registered on December 9, 2018. At the time the Complaint was filed, the disputed domain name does not resolve to an active website. However, the disputed domain name used to resolve to a website mentioning the Complainant’s products and trademarks. 5. Parties’ Contentions A. Complainant The Complainant’s contentions may be summarized as follows: i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights: Complainant states that it is the owner of several BITDEFENDER trademarks around the world, inter alia in the European Union and the United States. Complainant also claims to having registered and using various domain names that include the BITDEFENDER mark. Furthermore, Complainant alleges that the disputed domain name entirely includes its BITDEFENDER trademark, and that the mere addition of the generic term “central” does not make any meaningful difference. In addition, Complainant argues that Respondent also uses, without authorization, Complainant’s BITDEFENDER CENTRAL trademark, in a juxtaposed position, as well as other proprietary images over the devices used by Complainant in the course of trade, and in connection with goods/services within the field of security software. Complainant alleges that the disputed domain name is unlawfully used in terms of misleading visitors into believing that the domain name points towards one of Complainant’s official sites, and in order to lure unsuspecting visitors into communicating their product serial numbers to the website operators. Complainant adds that its trademarks are undisputedly known amongst consumers, well represented in over 100 countries for the last 18 years. Complainant also states that its services, under the BITDEFENDER trademark, have been recognized as having the best virus detection rate five years in a row and have won several awards. Therefore, Complainant considers that, given the well-known character of the BITDEFENDER trademarks in the field of security software applications and services relating thereto, the likelihood of confusion for Internet users with regards to the goods/services offered on the disputed domain name is, therefore, very high, and that Internet users are very likely to mistake Respondent website for an official one, originating from Complainant. Considering the above elements, Complainant states that the disputed domain name is confusingly similar to the Complainant’s trademarks. ii) Respondent has no rights or legitimate interests in respect of the disputed domain name: Complainant alleges that it has not given any permission nor authorization to Respondent to use the BITDEFENDER trademark, including in a domain name. Complainant argues that Respondent did not register “central bitdefender” or any “bitdefender” formative trademarks in any jurisdiction. Moreover, Complainant states that even if Respondent sold or is currently selling original Bitdefender software or offering relating services on the website associated with the disputed domain name, such behavior does not legitimate any use of the BITDEFENDER trademarks. According to Complainant, Internet users purchasing original BITDEFENDER products might access the disputed domain name and erroneously believe that they have reached the official “Bitdefender” Internet site or a site authorized by Complainant. Complainant argues that the disputed domain name is highly similar to Complainant’s earlier well-known BITDEFENDER trademarks since it features the BITDEFENDER trademark entirely, as well as the earlier BITDEFENDER CENTRAL trademark in a juxtaposed form. Complainant concludes that Respondent has no rights or legitimate interests in the disputed domain name. iii) The disputed domain name has been registered and is being used in bad faith: Complainant states that BITDEFENDER trademarks are highly distinctive and well-known amongst Internet users, Complainant being a worldwide known entity doing business on the Internet, in the field of security software, for more than 18 years. Complainant argues that Respondent was not mandated nor authorized to use its trademarks, and neither Complainant nor any of its affiliates gave consent to the registration and use of the disputed domain name Furthermore, Complainant adds that Respondent takes or is likely to take advantage of the reputation of the BITDEFENDER trademarks amongst Internet users and Complainant’s own existing customers, as Respondent uses the disputed domain name for identifying and presenting services under the name “Central Bitdefender”, thus suggesting a direct link with the Complainant without its authorization. Complainant also considers that Respondent, by associating the disputed domain name with a website featuring specific graphic devices usually used by Complainant on its official website, emphasizes upon the “Bitdefender” name and was necessarily aware of the existence of Complainant’s earlier trademarks. Complainant finally argues that using and affixing the almost identical denomination “Central Bitdefender” on the disputed domain name in an attempt to mislead Internet users into believing that its services are connected to Complainant, or originates directly from or is being authorized or endorsed by Complainant, cannot be consider as a registration and use in good faith. Considering all these points, Complainant states that it is likely that Respondent knew of the existence and targeted Complainant’s trademarks at the time of the registration and further used the disputed domain name in bad faith. B. Respondent Apart from the brief emails mentioned under procedural history, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules provides that the “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) of the Rules provide that: “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. The Policy provides, at paragraph 4(a), that each of the three findings must be made in order for a Complainant to prevail: i) Respondent’s 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) Respondent’s disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”). The Panel finds that Complainant has duly shown that it owns rights in the BITDEFENDER trademark. Firstly, the disputed domain name is entirely incorporating the trademark BITDEFENDER, in which Complainant has rights. It is also commonly considered that a generic Top-Level Domain (“gTLD”), such as “.org”, shall be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see section 1.11 of the WIPO Overview 3.0). Previous UDRP panels have considered as a rule that the addition of a dictionary term, such as “central” in the present case, does not change the meaning of the terms composing the domain names and does not prevent a finding of confusing similarity (see for example, Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / James Farre, James Co Limited,WIPO Case No. D2020-0208: “The Panel concludes that the disputed domain name is confusingly similar to the ACCENTURE mark. As noted by Complainant, the disputed domain name incorporates in full the term “accenture,” adding only the descriptive term “federals” and the generic gTLD “.com.” The term “federals” does not serve to distinguish the disputed domain name from the ACCENTURE trademark”). The Panel finds that the Complainant satisfies paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name. As said before, Complainant has demonstrated that the disputed domain name is confusingly similar to the earlier BITDEFENDER trademarks. Complainant has duly indicated that it did not give any authorization or license to Respondent neither to use the sign nor to register the disputed domain name. Respondent did not file any “Central Bitdefender” trademarks. A basic search on the sign refers directly to Complainant while it does not mention Respondent. To that extent, it shows that Respondent is not commonly known under this name. The disputed domain name used to resolve to a website mentioning the Complainant products and trademarks. Previous UDRP panels found that this does neither constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use (see for example, Cdiscount v. Contact Privacy Inc. Customer 0155775631 / Jaouad Jermoune, cdiscount1,WIPO Case No. D2019-3003). Respondent used several references to the official BITDEFENDER trademarks on its website. The Panel finds that the reference of the trademarks and products of Complainant increases the risk of confusion. In addition, the Panel also finds that the references to the BITDEFENDER products could mislead Internet users into believing they are visiting a website officially related to Complainant’s activity. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith. Complainant has duly shown its reputation regarding its international presence and its multiple Furthermore, Respondent appears to be using the disputed domain name for identifying and presenting Internet services under the denomination “Central Bitdefender”, thus suggesting a direct link with the Complainant without its authorization. Considering the similarity of the services offered through the website configured on the disputed domain name It even seems that it could have been taking advantage of Complainant’s reputation to attract visitors on its website (see for example, L’Oréal v. Registration Private, Domains By Proxy, LLC / Warren Dunn,WIPO Case No. D2020-0359: “The Respondent has demonstrated, by registering the disputed domain name which reproduces the Complainant’s trademark, an intent to capitalize on the goodwill of the Complainant’s trademark.”). Therefore, Panel finds that Respondent registered and is using the disputed domain name in bad faith. Complainant has therefore satisfied 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 Nathalie Dreyfus
- International Registration trademark BITDEFENDER No. 1086029 registered on June 17, 2011, designating, among others, the United States;
- EUTM BITDEFENDER No. 002372506 filed for protection on September 9, 2001 and registered on May 14, 2003;
- US trademark BITDEFENDER BOX No. 5153471 filed for protection on August 22, 2014 and registered on March 7, 2017;
- US trademark BITDEFENDER HOME SCANNER No. 5543586 filed for protection on March 7, 2017 and registered on August 21, 2018.
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award-winning products. It seems very unlikely that Respondent did not think of or knew about Complainant’s existence and Complainant’s trademarks prior to registering the disputed domain name, especially as they seem to be developing in the same field of activity. Previous UDRP panels found that a worldwide reputation of the Complainant could be a clue of the bad faith of the Respondent (see for example, Skyscanner Limited v. Tim Co.,WIPO Case No. D2020-1082: “what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the Complainant’s mark.”)
Sole Panelist
Date: August 7, 2020
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