ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Tailscale Inc. v. General Inquiries Case No. DCO2024-0028 1. The Parties The Complainant is Tailscale Inc., Canada, represented by Cavelier Abogados, Colombia. The Respondent is General Inquiries, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name is registered with CloudFlare, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2024. On April 10, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2024, 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 (Cloudflare, Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 11, 2024, 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 April 15, 2024. 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 April 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2024. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 13, 2024. 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.
page 2 4. Factual Background The Complainant is a Canadian provider of online information technology (“IT”) services – particularly virtual private networks (“VPN”) – under the trademark TAILSCALE. The Complainant owns several trademark registrations for the brand TAILSCALE in numerous jurisdictions, including in the United States (see as an example the trademark registration no 6,830,059, registered on August 30, 2022) and within the European Union (see as an example the trademark registration no 018211499, registered on July 11, 2020). The term “tailscale” is also the central part of the Complainant’s corporate name, as well as of the Complainant’s official website at “www.tailscale.com”. The Respondent registered the disputed domain name on February 2, 2024. The disputed domain name redirects to a third-party website that promotes and sells online network services in direct competition with the Complainant, entitled “Defined Networking”. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The dominant and main part of the disputed domain name is “tailscale”, which is identical in appearance, sound, and impact with the TAILSCALE trademarks. There is no difference between the disputed domain name and the TAILSCALE trademarks in its entirety, except for the addition of the country code Top-Level Domain (“ccTLD”) assigned to Colombia, “.co”. The generic “.co” is not relevant in determining whether a domain name is confusingly similar to a trademark. - The Respondent has no rights or legitimate interests in respect of the disputed domain name. Based on the information available to the Complainant, the Respondent does not use a name that incorporates the TAILSCALE trademarks or a substantially equivalent name. The Respondent was not authorized to use the TAILSCALE trademarks in connection with the disputed domain name, neither is an agent, nor a licensee of the Complainant. The Respondent redirects the disputed domain name to a third-party website (“www.defined.net”) that is not affiliated or associated with the Complainant, where VPN and other technological services are offered for sale. In fact, the Respondent is using the disputed domain name to attract customers to its website, making them believe that the site is affiliated with the Complainant’s official website. Therefore, the disputed domain name is not being used by the Respondent in a fair manner. - The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered almost fou years after the Complainant’s first TAILSCALE trademark registration. By mistakenly accessing the disputed domain name to obtain the Complainant's services, Internet users are being redirected to the “Defined Networking” website, thus generating more traffic to and interaction, which is an act of bad faith on the Respondent’s part. The fact that the Respondent is using the disputed domain name to attract Internet users to its website, confirms that the Respondent registered the disputed domain name in bad faith. It is impossible to identify any other logical reason why the Respondent registered the disputed domain name other than to attract to its website users searching for a website related to the TAILSCALE trademark or to the Complainant's business. “Tailscale” has no meaning and is not a commonly used word for technology services. It cannot be a coincidence that Respondent registered the disputed domain name due to an inadvertent mistake, as it is using the TAILSCALE trademark in its entirety, without any modifications. Additionally, the Respondent apparently is using false registration data in connection
page 3 with the disputed domain name, which is another fact that suggests that the disputed domain name was registered in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (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 Annexes 2 to 7 to the Complaint show that the Complainant owns trademark registrations for TAILSCALE in numerous jurisdictions that date as early as in 2020. The disputed domain name was registered in 2024. The trademark TAILSCALE is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark TAILSCALE merely by the by the addition of the ccTLD extension “.co”. It is already well established that the addition of a ccTLD extension such as “.co” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the disputed domain name; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. The Panel notes the identical composition of the disputed domain name, which carries a high risk of implied affiliation with the Complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 2.5.1., The Panel also notes that the present record provides no evidence to demonstrate the Respondent’s intent to use the disputed domain name in connection with a
page 4 bona fide offering of goods or services. Indeed, the Complainant has showed that the identical disputed domain name is being used to redirect to a website offering competing IT network services. WIPO Overview 3.0, section 2.5.3. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 documented out-of-pocket costs directly related to the disputed domain name; or (ii) the respondent registered the disputed 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) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the respondent has intentionally attempted 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 its website or location or of a product or service on its website or location. When the disputed domain name was registered by the Respondent (in February 2024) the trademark TAILSCALE was already registered and in use by the Complainant connected to the Complainant’s VPN services. The Panel has no doubt that “TAILSCALE” is a term directly connected with the Complainant’s trademarks and VPN services, given that it is a coined term that when searched only yields top results for the Complainant. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Considering the composition of the disputed domain name, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “tailscale” together with the ccTLD extension “.co” could be a mere coincidence. Actually, the Panel considers that in the present case, the specific choice of the ccTLD extension “.co” may even enhance the risk of confusion with the Complainant’s official website, that is published at . Such circumstances, together with the fact that the disputed domain name is being used to redirect Internet users to a website promoting and selling services that directly compete with the Complainant’s services, are enough in this Panel’s view to characterize bad faith registration and use in the present case. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.
page 5 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 be transferred to the Complainant. /Rodrigo Azevedo/ Rodrigo Azevedo Sole Panelist Date: May 30, 2024
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