The Complainant is NICE Ltd., Israel, represented by Pearl Cohen Zedek Latzer Baratz LLP, United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Siao Wei Ng, Malaysia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2021. On December 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 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 December 10, 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 December 15, 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 December 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2022. The Response was filed with the Center on January 10, 2022.
The Center appointed Andrew D. S. Lothian, Dawn Osborne, and Sebastian M.W. Hughes as panelists in this matter on February 28, 2022. The Panel finds that it was properly constituted. Each member of 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 NASDAQ-listed company, founded in 1986. It provides cloud and on-premises enterprise software solutions which perform advanced analytics of structured and unstructured data. The Complainant’s core offering is branded “CXone”, and is a cloud-native customer experience platform which includes customer analytics, omnichannel routing, workforce engagement, open cloud foundation, artificial intelligence (“AI”), automation, and other features. The Complainant claims this to be the world’s number one cloud native customer experience platform, and asserts in the Complaint and in a press release dated October 26, 2021 that over 25,000 organizations in more than 150 countries, including over 85 of the Fortune 100 companies, partner with it to transform customer interactions. Industry reports cited by the Complainant reference the Complainant’s significant presence in the Asia Pacific region, where the Respondent is based.
The Complainant is the owner of registered trademarks in a variety of jurisdictions for the word mark CXONE, including for example, Hong Kong Registered Trademark No. 304516272, registered on May 4, 2018 in Classes 9 and 42.
The disputed domain name was registered on November 1, 1999. The Respondent produces evidence of the incorporation of a private company named “CX One Sdn. Bhd.” with the Companies Commission of Malaysia dated March 22, 2021. The Respondent also produces evidence showing that it acquired the disputed domain name in a purchase effected via aftermarket website
The website associated with the disputed domain name uses a logo which mimics the top of the cloud formation in the Complainant’s logo. The Complainant’s logo consists of the text “CXone” with a cloud surrounding the word “one”. The Respondent’s logo consists of a wave formation created from the capitalized word “CXONE” which echoes the curves of the Complainant’s cloud. By comparative screenshots, the Complainant shows that its own website features a column structure in which each column covers aspects of its software including “Omnichannel Routing”, “Analytics”, “Workforce Optimization”, and “Automation and AI”, while the Respondent’s website features a similar column structure in which the titles are “Analytics and Reporting”, “Artificial Intelligence (AI) and Automation”, and “Cloud Solution or Subscription”.
5. Parties’ Contentions A. ComplainantIn summary, the Complainant contends as follows:
Identical or confusingly similarThe disputed domain name contains the Complainant’s registered mark, CXONE, in its entirety and creates an identical overall commercial impression that fails to create any visual, aural, or substantive distinction from said mark.
Rights and legitimate interestsThere is no evidence that the Respondent is commonly known as “cxone” and the Respondent sought no permission from the Complainant (nor was any such permission given by the Complainant) to use its mark in any manner. The Complainant uses the mark as its worldwide brand and includes it in its website address “www.nice.com/engage/cxone” as the primary platform for its brand. The Respondent’s use of the disputed domain name did not begin until August 2021, well after the Complainant’s rights were established. The Complainant has been unable to identify that the Respondent has registered any trademarks or any other intellectual property connected with the disputed domain name, nor do the telephone numbers or email address function on the website associated with the disputed domain name. Said website is rife with syntax errors (screenshot evidence produced). There are no social media or other Internet references associated with the disputed domain name or the Respondent’s purported company name. The Respondent is not making any legitimate, noncommercial, or fair use of the disputed domain name but is illegally using it in conjunction with “CXone” branding on the associated website in bad faith infringement of the Complainant’s trademark rights.
Registered and used in bad faithThe Respondent only acquired the disputed domain name in April 2021 and posted no content until August 2021, far later than the Complainant’s registration and use of the CXONE mark beginning in 2018. The Respondent registered and used the disputed domain name for the purposes of either disrupting the Complainant’s business by willfully and intentionally creating a likelihood of confusion with the Complainant to fraudulently divert customers from the Complainant to the Respondent and/or to cybersquat on relevant domain names to extract payment from the Complainant. The similarity of purported services offered by the Respondent suggests bad faith in that the Respondent uses the disputed domain name purportedly to offer online customer experience services. These services are very close to those offered by Complainant under its well-known CXONE brand. The only feasible reason for the Respondent to use the disputed domain name and to include CXONE in its website marketing is to lure and confuse consumers into believing that the Respondent’s website is somehow affiliated with, sponsored by, or approved by the Complainant. The Respondent is relying on Internet users to access the Respondent’s website on the assumption that the Respondent is the Complainant, or that the Respondent is acting for the Complainant. By relying on the probability that a significant number of Internet users will mistakenly type the name of the Respondent’s website instead of the name of the Complainant’s website, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source of such site.
The Respondent’s adoption of a very similar overall look and feel of its website (screenshots provided) supports that the Respondent has registered and is using the disputed domain name in bad faith. The aesthetic similarities provide no additional functionality and can only reasonably be said to be employed to confuse consumers, supporting bad faith usage.
B. RespondentIn summary, the Respondent contends as follows:
GeneralThe Respondent is a legal company which registered the disputed domain name via the Registrar for the purpose of conducting business in Malaysia. It is registered in good faith and not as an act of cybersquatting.
Identical or confusingly similarCX One Sdn. Bhd. was incorporated as a private company with the relevant local authority under the applicable local legislation on March 22, 2021. The company name is aligned with the subsequently registered disputed domain name, which was registered in good faith.
Rights or legitimate interestsThe business of the Respondent’s company, CX One Sdn. Bhd., is the provision of information technology (“IT”) consulting solutions and system integration. It does not violate the Complainant’s business as CXONE is their trademark, which is completely different, being product based where the Respondent’s business is service based. The Respondent’s said company has been conducting business with transactions running in Malaysia since its incorporation. The disputed domain name was used for the official company website and email to support the business in good faith.
Registered and used in bad faithAfter the company was incorporated, the Respondent discovered that the disputed domain name was on sale with the Registrar. The Respondent checked when purchasing it that it was not “under construction” or showing “can’t find server”. It was purchased legally and proof of purchase is supplied. The Respondent’s services do not compete with those of the Complainant and there is no trademark infringement.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed 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;
(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
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate both that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark. The comparison process between the trademark and the disputed domain name is usually conducted in a straightforward side-by-side analysis, typically excluding the generic Top-Level Domain (“gTLD”) as required for technical reasons only. If the trademark is considered by the Panel to be recognizable in the disputed domain name, confusing similarity will generally be found. If the trademark is held by the Panel to be identical to the disputed domain name, identity will typically be found.
In the present case, the Panel finds that the Complainant has UDRP-relevant rights in its CXONE registered trademark as described in the factual background section above. Comparing this to the Second-Level Domain of the disputed domain name, it may be seen that this is alphanumerically identical.
The Respondent does not directly address the question of identity or confusing similarity in its Response and makes no substantive challenge in that respect. While the Respondent notes under this heading that it has incorporated a private company and that its corporate name is aligned with the disputed domain name, this matter is more appropriately dealt with under the second and third elements of the Policy. Accordingly, in all of the above circumstances, the Panel finds that the disputed domain name is identical to the Complainant’s trademark and therefore 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 noncommercial 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. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
In the present case, the Panel finds that the Complainant has established the requisite prima facie case by reference to its submissions that the Respondent was not authorized by the Complainant to use its CXONE mark in any domain name, the Respondent possesses no intellectual property associated with the disputed domain name, there is no evidence that the Respondent is commonly known as “cxone”, and the Respondent is not making a noncommercial or fair use of the disputed domain name. The Complainant points out that there are no social media or other Internet references associated with the disputed domain name or the Respondent’s purported company, and that the associated website appears to mimic the Complainant’s website in certain respects, while the contact details are ineffective.
The Complainant having established the requisite prima facie case as outlined above, 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’s case is brief and focuses on the fact that it had incorporated a company in Malaysia before it purchased the disputed domain name. The fact that there is a pre-existing company matching the name in the disputed domain name could potentially give rise to rights and legitimate interests under the Policy if the Respondent is able to establish that it is commonly known by such name in accordance with paragraph 4(c)(ii) of the Policy. The expression “commonly known by” is usually interpreted by panels under the Policy as meaning that the respondent must have been commonly known by at least some other people than those responsible for the registration of the entity prior to the registration of the disputed domain name. Equally, the adoption of such name must be unconnected with and wholly independent from any reference to the complainant. As the panel noted in Royal Bank of Canada v. RBC Bank,
WIPO Case No. D2002-0672:
“If the intention of the Policy were otherwise, every cybersquatter would be able to avoid the operation of the Policy by the simple expedient of: (i) quietly registering someone else’s trademark as a corporation name (possibly in some jurisdiction having no connection with either the trademark owner or the cybersquatter); (ii) waiting some decent interval of time before registering the corporation name as a domain name; and (iii) resisting the trademark owner’s challenge under the Policy by claiming that the fact of the registration of the corporation proves that the corporation has been ‘commonly known by’ the corporation name/trademark/domain name, and therefore has a legitimate interest in the domain name.”
Here, there is no evidence that the company incorporated by the Respondent on March 22, 2021 was commonly known by such name (for example, as an entity pre-incorporation and without any indication that it was trading off the Complainant’s reputation) before the disputed domain name was acquired by the Respondent. The company itself was only incorporated three days before the disputed domain name was acquired, so there is no “decent interval of time” either. In these circumstances, the existence of the company does not confer rights and legitimate interests upon the Respondent. The Respondent cannot therefore avail itself of paragraph 4(c)(ii) of the Policy.
Turning to the question of whether the Respondent could be said to be making a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, the Complainant places this issue in sharp relief by asserting that the Respondent’s alleged trading is no more than pretextual cybersquatting, in that the Respondent’s business has no presence other than via the disputed domain name, the associated website mimics the style and content of the Complainant’s website in certain respects, and the contact details on said website are ineffective. In these circumstances, the Panel would have expected the Respondent to meet this challenge with the provision of appropriate evidence demonstrating that it is a genuine trading business, and also explaining the apparent similarities between the Parties’ websites. The Respondent’s answer is merely to claim that it has had unspecified “transactions running” since its incorporation.
Typically, the Panel would expect a genuinely trading business, which had been incorporated for just under a year, to be in a position to provide a wealth of material demonstrating that fact. It is notable therefore that the Respondent has failed to do so, and it cannot be said on the basis of the present record that the Respondent has either made demonstrable preparations to use the disputed domain name (or that the Respondent is already using the same) for a bona fide offering of goods and services. The Respondent cannot therefore avail itself of paragraph 4(c)(i) of the Policy. Finally, the Panel notes that the use of the disputed domain name is neither noncommercial in nature, nor is the Respondent making fair use of the disputed domain name with reference to the Complainant’s mark (for example, referential use, commentary, criticism, praise, or parody). In these circumstances, the Respondent cannot avail itself of paragraph 4(c)(iii) of the Policy. The Panel finds no other circumstances on the present record which would suggest that the Respondent possesses rights or legitimate interests in the disputed domain name.
In all of the above circumstances, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and accordingly determines that the Complainant has carried its burden with regard to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
As a preliminary matter on this topic, it should be noted that registration in bad faith within the meaning of the Policy encompasses acquisition in bad faith, and that the material date for the assessment of registration in bad faith in this particular case is not the original registration date of the disputed domain name, dating back to 1999, but rather the Respondent’s acquisition of it, dating from March 25, 2021. It should be noted that by that date, the Complainant’s CXONE mark was of some three years standing and, in terms of the industry reports cited by the Complainant, had gained substantial recognition and notoriety in the relevant marketplace.
The Complainant’s submissions on registration and use in bad faith focus principally upon paragraph 4(b)(iv) of the Policy. The Complainant asserts that the Respondent willfully and intentionally created a likelihood of confusion with the Complainant’s own website, the URL of which also features the Complainant’s CXONE trademark, to fraudulently divert customers from the Complainant to the Respondent. The Complainant notes the identity of the disputed domain name with its mark, the similarity of purported services offered by the Respondent, and the similarity in look and feel of the Parties’ websites, and concludes that the Respondent has set out to confuse customers into believing that its website is in some way affiliated with that of the Complainant. The Respondent does not attempt to answer these challenges. There is therefore no substantive rebuttal in the Response, and the Respondent merely repeats the fact of its incorporation of a limited company, asserting, without further substantiation, that the Parties’ goods or services would not compete with one another.
Having reviewed the terms of the Respondent’s website, the Panel finds that the Respondent has a case to answer here. Although it argues that the Parties’ offerings are dissimilar, the Respondent uses almost identical headings and text to those taken from the Complainant’s website to describe its alleged services, under a name identical to the Complainant’s mark and under a logo bearing a degree of similarity to that of the Complainant in its wave/cloud appearance. There is evidence before the Panel that the Complainant’s mark has achieved prominence in its line of business by way of the cited industry reports. This line of business is the same as that in which the Respondent’s website seeks to place itself. All of this seems to the Panel to be more than a coincidence, and it is notable in particular that the Respondent does not seek to deny prior knowledge of the Complainant or its trademark in the Response.
Given the evidence of the Complainant’s reputation, particularly in Asia where the Respondent is based, and absent further explanation from the Respondent as to why it selected the disputed domain name, the Panel finds it reasonable to infer that the Respondent incorporated its company and acquired the disputed domain name in the knowledge of the Complainant’s mark and with an intent to target this for its own reputational benefit by confusing the Complainant’s customers into assuming that the Respondent’s website was in some way affiliated or endorsed by the Complainant. This amounts to registration and use in bad faith in terms of paragraph 4(b)(iv) of the Policy.
Alternatively, there is evidence before the Panel that the Respondent’s alleged business may be merely pretextual, due to the fact that the website content appears to be syntactically and grammatically deficient, and that the contact details do not work. When challenged, the Respondent has produced no evidence of actual trading, merely asserting that it had engaged in transactions dating back to the incorporation of the company. From these circumstances, the Panel considers that it is reasonable to infer that the Respondent may have acquired the disputed domain name primarily to transfer it to the Complainant or a competitor for valuable consideration in excess of the Respondent’s documented out-of-pocket costs. In this scenario, the incorporation of the company by the Respondent serves merely as a smokescreen or veneer of legitimacy which the Respondent has adopted in order to conceal the true reason for its registration and use of the disputed domain name, namely that it is engaging in prototypical cybersquatting. These circumstances are suggestive of registration and use in bad faith in terms of paragraph 4(b)(i) of the Policy.
Finally, and for completeness, the Panel notes that the fact that the Respondent has incorporated a company with a matching name, some three days before acquiring the disputed domain name, does not in and of itself operate as a shield against a finding of registration and use in bad faith under the Policy as the Response appears to suggest (see the discussion in Royal Bank of Canada v. RBC Bank, supra).
In the absence of any substantive rebuttal by the Respondent of the Complainant’s case on this particular topic, the Panel finds on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith within the meaning of the Policy, and therefore 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
Presiding Panelist
Dawn Osborne
Panelist
Sebastian M.W. Hughes
Panelist
Date: March 14, 2022