The Complainant is CyberLink Corporation, Taiwan, Province of China, represented by Greenberg Traurig, LLP, United States of America (“United States”).
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / alice eye, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2021. On September 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 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 October 8, 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 October 11, 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 October 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2021.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on November 25, 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 BackgroundAccording to the Complainant’s undisputed allegations, the Complainant develops multimedia software and artificial intelligence (AI) facial recognition technology, having shipped over 400 million software and apps worldwide.
The disputed domain name was registered on August 12, 2020. The language of the registration agreement at the time of registration was English.
The Complaint is based, amongst others, on the following word trademarks for the term CYBERLINK, applied for before the date of registration of the disputed domain name:
- United States registration No. 4435932 (registered on November 19, 2013, for goods in class 9).
It results from the undisputed evidence provided by the Complainant that the disputed domain name resolves to a website that purports to sell the Complainant’s products but is actually used to collect personal information from the users. In addition, the disputed domain name is also used to send phishing emails to consumers pretending to be the Complainant and directing them to the website under the disputed domain name for phishing purposes.
5. Parties’ Contentions A. ComplainantFirstly, the Complainant contends that the disputed domain name is confusingly similar to its trademark CYBERLINK. Even when there are some differences in spelling, punctuation, or wording added or removed between a complainant’s trademark and a disputed domain name, there may still be sufficient similarity in appearance, meaning, or impression. Consequently, the disputed domain name is sufficiently similar to the CYBERLINK trademark because it merely replaces the letter “l” with the number “1”, which looks almost identical to “l”.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant has never authorized, licensed, or otherwise permitted the Respondent to register and/or use the disputed domain name. Furthermore, the Respondent – identified as “alice eye” – is not commonly known by the disputed domain name and has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services. In fact, using the disputed domain name to engage in fraud by impersonating the Complainant and sending phishing emails does not constitute a legitimate noncommercial or fair use of the disputed domain name.
Thirdly, the Respondent’s registration and use of the disputed domain name constitutes – in the Complainant’s view – bad faith. It is obvious to the Complainant that the Respondent must have been aware of the Complainant and its trademark CYBERLINK. Furthermore, use of a domain name by the Respondent to pretend that it is the Complainant, and creating false emails pretending that they are coming from the Complainant and its executive, in furtherance of a fraudulent endeavor shows that the Respondent registered the disputed domain name primarily for the purpose of disrupting the Complainant’s business. Finally, the Respondent used a privacy service to register the disputed domain name to shield its identity and elude the Complainant’s enforcement efforts.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs this Panel to “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 requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly SimilarPursuant to paragraph 4(a)(i) of the Policy, a complainant must establish rights in a trademark or service mark and that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of several verbal trademarks CYBERLINK, such as United States registration No. 4435932, registered on November 19, 2013. These trademarks predate the creation date of the disputed domain name, which is August 12, 2020.
It is acknowledged amongst the UDRP panels that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.9 with further references).
This Panel notes that the disputed domain name only substitutes the letter “l” by the figure “1” which is a similar-appearing character in the sense of the above doctrine. Therefore, the Panel concludes that the relevant mark CYBERLINK remains clearly recognizable within the disputed domain name which contains sufficiently recognizable aspects of that trademark (e.g., see Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel,WIPO Case No. D2016-0068 for a similar case where an “o” had been substituted by a “0”).
In light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complainant’s uncontested evidence the disputed domain name resolves to a website that purports to sell the Complainant’s products but is actually used to collect personal information from the users. In addition, the disputed domain name is also used to send phishing emails to consumers pretending to be the Complainant and directing them to the website under the disputed domain name for phishing purposes. It is further uncontested that the Complainant has not given any authorisation for such use and is not linked to the Respondent or this website. In this Panel’s view, such use cannot be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, since such use constitutes illegal activity and therefore can never confer rights or legitimate interests on the Respondent (see WIPO Overview 3.0 at section 2.13; see also TELUS Corporation v. Fortefusion Fortefusion, Wordcounts,WIPO Case No. D2021-0787). In addition, the Respondent did not submit any evidence of bona fide pre-Complaint preparations to use the disputed domain name. As outlined above, the Complainant’s uncontested allegations demonstrate that it has not authorized the Respondent’s use of the CYBERLINK trademarks for registering the disputed domain name, which is confusingly similar.
Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might be making a noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. In particular, the disputed domain name is used for a commercial website, so that a noncommercial use thereof is excluded from the outset. In addition, the Panel is satisfied that the registered trademark CYBERLINK is distinctive so that it is unlikely that the Respondent wanted to fairly use the disputed domain name containing this trademark almost identically.
It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
It is the view of this Panel that the Respondent has indeed registered the disputed domain name and is using it in bad faith:
It results from the Complainant’s documented allegations that the disputed domain name resolves to a website that purports to sell the Complainant’s products but is actually used to collect personal information from the users. In addition, the disputed domain name is also used to send phishing emails to consumers pretending to be the Complainant and directing them to the website under the disputed domain name for phishing purposes. It is further uncontested that the Complainant has not given any authorisation for such use and is not linked to the Respondent or this website. For the Panel, it is therefore evident that the Respondent positively knew of the Complainant’s trademarks and products. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademark CYBERLINK (almost) identically when it registered the disputed domain name. Registration of a domain name which contains a third party’s trademark or sufficiently recognizable aspects thereof, in awareness of said trademark and in the absence of rights or legitimate interests is suggestive of registration in bad faith (see, e.g.,TELUS Corporation v. Fortefusion Fortefusion, Wordcounts,WIPO Case No. D2021-0787; Charlotte Tilbury TM Limited v. Domains By Proxy, LLC / Qiangdong Liu, 365rw.com.ltd,WIPO Case No. D2020-0408).
The finding of bad faith registration and use is supported by the following further circumstances resulting from the case file:
(i) the Respondent’s failure to submit a response;
(ii) the Respondent’s failure to provide any evidence of actual or contemplated good-faith use;
(iii) the implausibility of any good faith use, to which the disputed domain name may be put; and
(iv) the Respondent hiding its identity behind a privacy shield.
Furthermore, the evidenced, fraudulent use of the disputed domain name to collect sensitive information via a website purporting to sell the Complainant’s products and to send phishing emails impersonating the Complainant clearly constitutes bad faith (see WIPO Overview 3.0, section 3.4.).
In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Tobias Malte Müller
Sole Panelist
Date: December 8, 2021