The Complainant is Safe Securities Inc., Formerly Lucideus Inc, United States of America (“United States”), represented by Cyber Law Consulting, India.
The Respondent is Tmotius Michael, Indonesia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2021. On September 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 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 7, 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 12, 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 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 24, 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 BackgroundThe Complainant is a company registered under the law of the State of Delaware, United States. The Complainant changed its name from Lucideus Inc. to its present name on December 28, 2020. According to the restated certificate of incorporation, the Complainant was originally incorporated under the name of Lucideus Inc. on December 23, 2016. The Complainant provides cyber security services through a portal at “www.lucideus.com”, in other words, a configuration of the disputed domain name, and claims that said portal became successful in a short space of time, with 5,651 hits per month, a Global Alexa Rank of 418,134 for the month of January, 2021, and a base of 228,351 users built over the last three years.
The disputed domain name was registered on April 28, 2012. The Complainant demonstrates that it is the original registrant of the disputed domain name by way of the registration invoice and multiple annual renewal invoices, each addressed to the Complainant’s Chief Executive Officer. The last of these is dated May 4, 2018 and provides that the disputed domain name was to be renewed for three years. The disputed domain name’s expiration date would therefore have been April 28, 2021.
The Complainant is the owner of a variety of registered trademarks for the word mark and stylized device/word mark LUCIDEUS, including for example, United States Registered Trademark No. 5811886, for the word mark LUCIDEUS, registered on July 23, 2019 in classes 41 and 42, and Indian Registered Trademark No. 4030888 for the word mark LUCIDEUS, registered as of December 18, 2018 in class 42.
Nothing is known of the Respondent, which has not participated in the present proceeding and has an address in Indonesia. The Panel surmises that the Respondent acquired the disputed domain name via the Registrar at some point after its expiration date of April 28, 2021. The Complainant states that the acquisition date of the disputed domain name was June 9, 2021, based on the “Updated Date” entry on a corresponding WhoIs record, searched on or around July 14, 2021.
The Complainant did not provide a screenshot of the website associated with the disputed domain name and the Panel visited it on November 24, 20211 , on which date the disputed domain name redirected to a website at “www.momborestaurant.com”. Said website was in the Indonesian language and, when machine translated, promoted what appeared to be a membership gambling club, “QQEMAS”. There did not appear to the Panel to be any obvious relationship between the disputed domain name, the website at “www.momborestaurant.com”, and the said gambling club and, in particular, the disputed domain name did not appear to be mentioned in any of the associated website content.
5. Parties’ Contentions A. ComplainantThe Complainant contends as follows:
Identical or confusingly similarThe Complainant has been using its LUCIDEUS trademark since April 28, 2012, and it has also established unregistered trademark rights due to longstanding use of said mark. The disputed domain name is identical to such mark. The Respondent purchased such disputed domain name from the Registrar upon its expiration.
Rights or legitimate interestsThe Respondent has no rights or legitimate interests in the disputed domain name or in the Complainant’s trademarks. The Complainant has not authorized or licensed the Respondent to use its mark in any way and the use of the disputed domain name incorporating the Complainant’s mark by the Respondent is strong evidence that it has no rights or legitimate interests therein.
By virtue of the Complainant’s adoption and uninterrupted and exclusive usage of its LUCIDEUS trademark for more than a decade, it has become exclusively associated with the Complainant in the eyes of Internet users and companies. The disputed domain name was purchased by the Respondent from the Registrar in June 2021. It could have been purchased at any time between May 9, 2021 and June 14, 2021 but in fact was purchased on June 9, 2021. The disputed domain name is being used as a gaming/jackpot website using the Complainant’s trademark. The Respondent dishonestly obtained the disputed domain name with the bad faith intention to ride over the reputation of the Complainant’s well-known trademark and to attract Internet users, for commercial gain, to the Respondent’s website based on the fame of the Complainant’s mark. There is no other plausible reason for the Respondent’s conduct and its use cannot constitute a bona fide offering of goods or services. The Respondent may not rely on its intentional trademark infringement to demonstrate a legitimate interest as this would be contrary to the intent of the Policy. Confusion has been created for Internet users between the Complainant’s former use of the disputed domain name and the Respondent’s present use. The Respondent is the second user of the LUCIDEUS trademark and it is a settled principle of trademark law that there can be only one mark, source and proprietor. There cannot be two origins. The Respondent has used the disputed domain name prior to notice of this dispute, however it has knowingly misrepresented the position regarding the requirements of paragraph 2 of the Policy.
Registered and used in bad faithThe Respondent was aware of the Complainant’s rights in its LUCIDEUS mark when it registered the disputed domain name. This may be deduced from the fact that the Registrar and the Respondent were aware that the Complainant had used the disputed domain name for a long time, that the Respondent purchased the disputed domain name before the Complainant had renewed it, and that a simple Internet search would have revealed the Complainant’s presence and registered trademarks in the United States and India. Constructive knowledge of a well-known mark like LUCIDEUS is sufficient to establish registration in bad faith.
The Respondent knew or should have known of the Complainants’ domain name and trademark rights and nevertheless registered a domain name incorporating the latter in circumstances where the Respondent had no rights or legitimate interests therein. The Respondent’s gaming site was started with the intention of harming the Complainant’s reputation and to divert Internet users’ traffic. It is well-settled that the registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith use and registration.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements described in paragraph 4(a) of the Policy have been satisfied:
(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 SimilarUnder this element of the Policy, the assessment, which operates as a standing requirement, falls into two parts. First, the Complainant must show UDRP-relevant rights in a trademark. Secondly, the disputed domain name is compared to such trademark in order to determine identity or confusing similarity (typically disregarding the generic Top-Level Domain (“gTLD”) as being required for technical reasons only). Generally speaking, if the Complainant’s trademark is recognizable within the disputed domain name, confusing similarity may be found.
In the present case, the Panel is satisfied that the Complainant has UDRP-relevant rights in its LUCIDEUS registered trademark. It is not necessary for the Panel to examine the Complainant’s claims to unregistered trademark rights in this term. Turning to the comparison process, it may be seen that the Second-Level of the disputed domain name is identical to the Complainant’s said LUCIDEUS mark. It is entirely recognizable in the disputed domain name.
In the above circumstances, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and accordingly that the Complainant has carried its burden in terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Complainant has not authorized or licensed the Respondent to use its mark in any way and that the Respondent has dishonestly obtained the disputed domain name with the bad faith intent to ride over the reputation of the Complainant’s well-known trademark and to attract Internet users, for commercial gain, to the Respondent’s website based on the fame of the Complainant’s mark. The Panel finds further support for such prima facie case in the Complainant’s assertion that the Respondent’s conduct, as described by the Complainant, can have no plausible reason other than an abuse of the Complainant’s trademark, and that the Respondent’s use of the disputed domain name for this purpose cannot constitute a bona fide offering of goods or services.
In the above circumstances, the burden of production shifts to the Respondent to bring forward evidence of any rights or legitimate interests which it might have in the disputed domain name. The Respondent has chosen not to engage with the present proceeding. There are no submissions or evidence available on the Respondent’s side which might have supported a claim of rights or legitimate interests in respect of the disputed domain name. The Panel has considered the possibility that the Respondent might have registered the disputed domain name upon its expiration without being aware of the Complainant’s trademark and reputation. However, as far as the Panel can tell, the mark LUCIDEUS, as repeated in the Second-Level of the disputed domain name, exclusively references the Complainant and its trademark. No alternative and independent reason for its selection by the Respondent is evident to the Panel. For example, while the word “lucideus” has a classical appearance, as far as the Panel is aware, it is not a “dictionary” word in Latin or Greek, unlike the word “lucidus”, meaning bright or clear. In any event, the Respondent could not have suggested that it had selected the disputed domain name independently of the Complainant’s rights because it is some kind of variation on the theme of a dictionary word, since it is not being used for any related purpose.
Why, then, did the Respondent register the disputed domain name and point it to an online gambling website via what appears to be a restaurant’s domain name? In the absence of any reasonable explanation from the Respondent, this does not appear to be a legitimate activity which is unrelated to the Complainant’s previous activities in connection with the disputed domain name. The Panel infers that the Respondent sought principally to obtain the Internet traffic formerly generated by the Complainant’s efforts, including the goodwill which it had built up in its LUCIDEUS trademark, when it was the registrant of the disputed domain name. The Respondent apparently determined that it would exploit this unfairly for its own commercial gain by using the disputed domain name to promote a membership gambling website.
The Panel’s reasonable inference in this matter is supported by the unchallenged evidence of the Complainant’s website’s global ranking for the month of January 2021, which suggests that it had obtained some notoriety that would potentially have been desirable to the Respondent in terms of the traffic from consumers seeking the Complainant’s website which the Respondent could then deliver to the restaurant domain name, and onwards to the online gambling website. In the absence of any answer to the Complaint from the Respondent, or any reasonable explanation arising from the facts and circumstances of the case, the Panel finds that this use of the disputed domain name could not be classed as a bona fide offering of goods or services since it seeks to benefit unfairly from the trademark value of the disputed domain name.
Accordingly, the Respondent has failed to rebut the prima facie case established by the Complainant, and the Panel therefore finds that the Complainant has carried its burden in terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 general, for a complainant to make out registration and use in bad faith under the Policy, it must show that the domain name concerned was registered in the knowledge of its rights and with intent to target these unfairly. In the present case, the Complainant asserts that it had established a reputation and goodwill in connection with its own use of the disputed domain name before it was registered or acquired by the Respondent shortly after its expiration date. The Complainant points to its global Alexa ranking in order to provide support for this contention and suggests that this ranking gives rise to a reasonable inference that the Respondent was likely to be aware of the Complainant’s rights, and that it most probably registered the disputed domain name in order to exploit the goodwill and Internet traffic built by the Complainant when it controlled the disputed domain name itself.
The Respondent has not sought to challenge the Complainant’s allegations in this administrative proceeding. It appears to the Panel that the Respondent is using the disputed domain name, which consists of the Complainant’s trademark, to forward traffic to what seems to be a restaurant-themed domain name, and onward to a membership gambling site. There is no particular logic to this use of the disputed domain name, other than that the Respondent was probably aware of the reputation which the Complainant had built in the disputed domain name at the point when it acquired it from the Registrar, and that the Respondent determined to exploit this, and the related Internet traffic, to its own commercial advantage. In the circumstances of the present case, and in the absence of any reasonable alternative explanation from the Respondent, the Panel cannot see how this could be regarded as good faith registration and use of the disputed domain name.
In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and accordingly that the Complainant has carried its burden in terms of 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
Andrew D. S. Lothian
Sole Panelist
Date: December 8, 2021
1 With regard to the Panel conducting limited factual research into matters of public record, such as consulting online public databases or visiting the website associated with the disputed domain name, see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).