The Complainant is Citrix Systems, Inc., United States of America (“United States”), represented by Day Pitney LLP, United States.
The Respondent is WhoisGuard, Inc., Panama / John Gold, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2021. On January 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 27, 2021, 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 the Complainant on February 2, 2021 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 February 2, 2021. 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 February 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on March 9, 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 Since 1989, the 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. Currently, the Complainant’s products and services are used by more than 400,000 organizations and over 100 million people worldwide The Complainant is the owner of the following United States trademarks, including, but not limited to: CITRIX, United States Trademark Registration No. 1,685,759, registered on May 5, 1992 in international class 9; CITRIX, United States Trademark Registration No. 2,517,278, registered on December 11, 2001 in international class 41; CITRIX, United States Trademark Registration No.2,515,233, registered on December 4, 2001 in international class 35; CITRIX, United States Trademark Registration No. 2,614,647, registered on September 3, 2002 in international classes 37 and 42. The United States CITRIX trademark registrations, including those listed above, are active, valid, and subsisting, and have been continuously used in the United States in connection with goods and services related to distinctive software goods and services since at least as early as 1996. In addition to the United States trademark registrations for CITRIX, the Complainant also owns numerous trademark registrations for CITRIX in many jurisdictions worldwide (hereinafter collectively referred to as the “CITRIX Mark”). In addition, the Complainant hosts and operates an official website at “www.citrix.com”, which describes the products and services that the Complainant provides. The Disputed Domain Name was registered on January 5, 2021. The Disputed Domain Name redirected users to “www.citrix.com/downloads”, the Complainant’s official website, specifically the download section of that website. 1 In addition, there are mail exchanger records associated with the Disputed Domain Name, indicating that it was being used for email correspondence. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and - the Disputed Domain Name was registered and is being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)): (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the 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 This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the CITRIX Mark as set forth below. The Complainant has established rights in the CITRIX Mark based on its many years of use as well as its registered trademarks for the CITRIX Mark in the United States and jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the CITRIX Mark. The Disputed Domain Name consists of the CITRIX Mark in its entirety followed by the dictionary word “panel”, and then followed by the generic Top-Level Domain (“gTLD”) “.org”. Where the trademark is recognizable in the Disputed Domain Name, the addition of a dictionary term, such as “panel” does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“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”). Here, the addition of the term “panel” to the Complainant’s trademark in the Disputed Domain Name does not prevent a finding of confusing similarity between the Complainant’s CITRIX Mark and the Disputed Domain Name, Finally, the addition of a gTLD such as “.org” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Moreover, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its CITRIX Mark and the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The fact that the Disputed Domain Name resolved to the Complainant’s own website, along with the active MX records, and the composition of the Disputed Domain Name support that the Respondent may be attempting to pass off as the Complainant and potentially request sensitive information from the Complainant’s customers, which could be deemed fraudulent conduct and would not confer rights or legitimate interests on the Respondent. The Respondent has not disputed the Complainant’s contentions or responded to this matter in any way. “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.” WIPO Overview 3.0, section 2.13.1. The Panel finds that nothing on the record before it would support a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In addition, the composition of the Disputed Domain Name, comprising the entirety of the CITRIX Mark, carries a high risk of implied affiliation and cannot constitute fair use here, as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. First, the circumstances of this case including claims that the Disputed Domain Name has been used to impersonate the Complainant and perpetrate a phishing scheme to acquire sensitive information from the Complainant’s customers, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the Disputed Domain Name may be put, support an inference of bad faith. Second, the Disputed Domain Name was registered long after the Complainant first used and registered its CITRIX Mark. The Panel, therefore, finds it likely that the Respondent had the Complainant’s CITRIX Mark in mind when registering the Disputed Domain Name. Finally, the registration of a disputed domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be sufficient in certain circumstances to infer opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s CITRIX Mark. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun 1 At the writing of this Decision, however, the Disputed Domain Name redirects to a webpage that states that “attackers may be trying to steal your information”.
Sole Panelist
Date: March 22, 2021
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