The Complainant is Zoom Video Communications, Inc., United States of America (“United States” or “US”), represented by Chestek Legal, United States.
The Respondent is Domain Admin, Belize / Domain Admin InfoSoftware, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2020. On November 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrants 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 November 10, 2020, providing the registrants 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 November 13, 2020. On November 13, 2020, the Registrar transmitted by email to the Center its amended verification response disclosing the corrected 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 November 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 November 16, 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 November 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2020. The Center appointed Taras Kyslyy as the sole panelist in this matter on December 18, 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 The Complainant is a company providing teleconferencing services under the ZOOM mark. The Complainant owns a number of trademark registrations of the ZOOM mark including Japanese trademark registration No. 1365698, registered on August 4, 2017. The disputed domain name The disputed domain name The disputed domain name The disputed domain name All of the disputed domain names were hosted on the same IP address. 5. Parties’ Contentions A. Complainant The disputed domain names are identical or confusingly similar to the Complainant’s trademark. The disputed domain names all begin with the Complainant’s trademark. In three of the disputed domain names, the Complainant’s trademark is followed by a hyphen and the words “software”, “download”, or “downloads” followed by another hyphen and the letter string “msetup”. The fourth disputed domain name does not have a middle word, only the Complainant’s trademarks followed by a hyphen and the letter string “msetup”. The Respondent has taken the Complainant’s trademark and simply appended generic terms – “software” “download” or “downloads” – to it, as well as the Respondent’s own generic name for its product. The use of a generic term that describes the Complainant’s services when combined with the Complainant’s trademark increases the similarity between the Complainant’s trademark and the Respondent’s use of it in the disputed domain names. The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services. Websites associated with the disputed domain names suggested teleconference services featuring the Complainant’s trademark. The disputed domain names hosted on the same IP address were reported for distribution of malware. The Complainant has not authorized the Respondent to use the Complainant’s trademark or offer the Complainant’s products or services. The Respondent is not commonly known by the disputed domain names. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. The disputed domain names were registered and are being used in bad faith. The Respondent is a trademark infringer, using the fame of the Complainant’s trademark to attract users for the distribution of its own software. The Respondent is using the Complainant’s trademark to lure users into downloading malicious software. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issues – Consolidation The Complainant requested the Panel to hear the present dispute brought against two respondents as a consolidated Complaint. Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition”. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents, in part, as follows: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. The Complainant asserts, among other things, that the Respondents should be treated as one respondent in this proceeding, as the disputed domain names are all owned by the same entity, since (i) the disputed domain names share the same IP-address, (ii) it is beyond coincidence that the disputed domain names with unrelated owners would all share the letter string “msetup”. The Panel also notes that the disputed domain names are registered with the same registrar and the Respondents use the same name (Domain Admin) for all registrations. Based on the forgoing, the Panel finds that the disputed domain names are subject to common control and the consolidation would be fair and equitable to all parties. Accordingly, the Panel accepts the Complainant’s arguments in favor of consolidation and grants the request to consolidate the Respondents into one proceeding. The Panel refers to the Respondents as “the “Respondent”. B. Identical or Confusingly Similar According to section 1.11.1 of the WIPO Overview 3.0 the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards TLD “.com” for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain names incorporate the entirety of the Complainant’s trademark. According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that in the present case the Complainant’s trademark is recognizable within the disputed domain names and the addition of descriptive words “software”, “download”, “downloads”, “msetup” and hyphens respectively do not prevent the finding of the confusing similarity. Considering the above the Panel finds the disputed domain names are confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names. Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain names. The Respondent is not commonly known by the disputed domain names, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its prior registered trademark by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875). The disputed domain names The Respondent’s use of the confusingly similar disputed domain names According to section 2.13.1 of the WIPO Overview 3.0 Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. According to section 2.13.2 of the WIPO Overview 3.0 Panels are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even when the respondent is in default. On the other hand, panels have found that circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity. In the present case the Panel finds that the provided reports by the malware monitoring company flagging the websites at the disputed domain names The Respondent has no right or legitimate interests in the disputed domain names currently resolving to an inactive website (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302). Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain names. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith At the time of the registration of the disputed domain names the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through intensive and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the United States and internationally. Thus, the Panel finds that the disputed domain names (confusingly similar to the Complainant’s trademark) were registered in bad faith. According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. In this case, the disputed domain names According to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) previous misleading use of the disputed domain names According to section 3.4 of the WIPO Overview 3.0, use of a domain name to distribute malware may constitute bad faith. As discussed above, the previous use of the disputed domain names Considering the above the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case 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 names Taras Kyslyy
Sole Panelist
Date: January 1, 2021
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