The Complainant is Oath Inc., United States of America (“United States”), represented internally.
The Respondent is Sachin Sharma, 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 December 18, 2020. On December 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2021. The Center appointed Luca Barbero as the sole panelist in this matter on January 27, 2021. 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 (formerly known as AOL Inc.) is part of the Verizon Media holding company and owner of the trademarks AOL DESKTOP GOLD and DESKTOP GOLD. The AOL Desktop Gold software suites offer an all-in-one desktop management client that includes customizable email options, content browsing and search features, anti-phishing protection, and other premium cybersecurity benefits. The Complainant is the owner of several trademark registrations for DESKTOP GOLD and AOL DESKTOP GOLD, including the following, as per trademark certificates submitted as Annex C to the Complaint: - United States trademark registration No. 5836380 for AOL DESKTOP GOLD (word mark), filed on November 26, 2018, claiming first use in commerce on May 2, 2016, and registered on August 13, 2019, in international class 9; - United States trademark registration No. 6125345 for DESKTOP GOLD (word mark), filed on November 26, 2018, claiming first use in commerce on December 10, 2016, and registered on August 11, 2020, in international class 9. The Complainant is also the owner of the domain name The disputed domain name The Complainant contends that disputed domain name With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent was in no way authorized to register the disputed domain name, nor has it ever received any express or implied license, authorization, or consent to use the trademark DESKTOP GOLD in a domain name or in any other manner. The Complainant highlights that the Respondent is also not commonly known by the disputed domain name nor by any name reflected thereby. The Complainant further submits that its use of the disputed domain name, which resolves to a website that purports to offer technical support and related services to the Complainant’s subscribers using an ineffective disclaimer placed at the bottom of the home page after the section where users are prompted to provide personal information, does not provide the basis for any rights to, or legitimate interests in, the disputed domain name. Moreover, the Complainant contends that the Respondent’s misappropriation of the trademark DESKTOP GOLD for use in the disputed domain name is also not accidental as the Respondent chose to register the disputed domain name in order to capitalize on the consumer recognition of the Complainant’s trademark. With reference to the circumstances evidencing bad faith, the Complainant indicates that, judging by the name and use of the disputed domain name, that the Respondent was well aware of the Complainant’s rights in the trademark DESKTOP GOLD, and that it clearly registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant further underlines that the Respondent has used the Complainant’s trademark DESKTOP GOLD without its consent or authorization for the purpose of capitalizing on the Complainant’s reputation. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark DESKTOP GOLD based on the trademark registration cited under section 4 above and the related trademark certificate submitted as Annex C to the Complaint. As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically 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. In the case at hand, the Panel finds that the disputed domain name is confusingly similar to the trademark DESKTOP GOLD as it reproduces the trademark in its entirety with the mere addition of a hyphen between the words “desktop” and “gold”, which does not prevent a finding of confusing similarity, and the gTLD “.com”, which can be disregarded when comparing the similarities between a domain name and a trademark. In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent. Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. According to the evidence on record, there is no relationship between the Complainant and the Respondent, and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name. Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Sachin Sharma, might be commonly known by the disputed domain name. The Panel also finds that the Respondent’s use of the disputed domain name to redirect users to a website purportedly offering technical support to the Complainant’s subscribers and providing hyperlinks to download the Complainant’s Desktop Gold application, without providing an evident and accurate disclaimer on the top of the home page, does not amount to bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. The current passive holding of the disputed domain name is further evidence of the Respondent’s lack of rights or legitimate interests. Furthermore, as highlighted in section 2.5.1 of the WIPO Overview 3.0, the Panel finds that the disputed domain name carries a risk of implied affiliation. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith. In view of the fact that the disputed domain name is almost identical to the Complainant’s trademark DESKTOP GOLD, which is constituted by an unusual combination of the words “desktop” and “gold” and was first used in commerce in the United States in 2016 (according to the information published in the related trademark certificate in Annex C to the Complaint), and in light of the Complainant’s prior registration and use of the domain name Moreover, in light of the Respondent’s redirection of the disputed domain name to the website described above, featuring the Complainant’s trademarks and purportedly offering support to the Complainant’s customers with reference to the Desktop Gold products, whilst failing to accurately and prominently disclose the lack of relationship with the Complainant on the top of the homepage, the Panel finds that the Respondent obviously registered the disputed domain name with the Complainant and the Complainant’s trademark in mind. The Panel finds that, on balance of probabilities, the Respondent attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website, according to paragraph 4(b)(iv) of the Policy. In the case at hand, in view of i) the Respondent’s registration of a domain name clearly confusingly similar to the Complainant’s trademark and suggesting an affiliation with the Complainant; ii) the Respondent’s prior redirection of the disputed domain name to the misleading website described above; iii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; and iv) the Respondent’s failure to respond to the Complaint, the Panel finds that the current passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use. Therefore, the Panel finds that the Complainant has proven that the Respondent registered and is using the disputed domain name in bad faith according to 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 Luca Barbero
As mentioned above, the disputed domain name is currently not pointed to an active website. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, e.g., in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Sole Panelist
Date: February 10, 2021
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