Complainant is Avast Software s.r.o., Czech Republic, represented by Staidl Leska, Czech Republic.
Respondent is Prashant Kumar, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2020. On April 24, 2020, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On April 28, 2020, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 30, 2020. In accordance with the Regulations, article 7.1, the due date for Response was May 20, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 21, 2020. The Center appointed Dinant T. L. Oosterbaan as the panelist in this matter on June 15, 2020. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background Complainant is a large security software company. Complainant was founded in 1988 and currently has more than 400 million users. According to the evidence submitted by Complainant, Complainant owns multiple trademark registrations for AVAST, including the International trademark AVAST with registration number 839439, date of registration June 22, 2004. In addition, Complainant operates various websites containing the AVAST mark, including “www.avast.com”. Under this main website Complainant offers customer support relating to its software. The Domain Name, Currently, the Domain Name does not resolve to an active website. According to the Complaint, the Domain Name resolved to a website appearing to offer customer support service concerning Complainant’s AVAST software to Complainant’s customers. 5. Parties’ Contentions A. Complainant Complainant submits that the Domain Name is confusingly similar to Complainant’s trademark as AVAST is the distinctive part of the Domain Name. According to Complainant the additional part “contactnederland” is descriptive in nature and it makes the confusion more likely due to the false impression that the website under the Domain Name is operated by Complainant. It is almost inevitable that when consumers access the website at the Domain Name they will think that they are accessing a website affiliated with Complainant. According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant did not grant any license or authorization to Respondent to register or use the Domain Name. Complainant submits that currently there is no active website under the Domain Name. Complainant asserts that the website under the Domain Name previously was used by Respondent to offer customer support service concerning Complainant’s AVAST software to Complainant’s customers. Respondent intentionally tried to make the impression of cooperation with Complainant. Respondent placed Complainant’s trademark on every page of its website and mimicked the trade dress of Complainant using the colour orange. The relationship between Complainant and Respondent was not accurately and prominently disclosed. Moreover, the content of the website was very general, with no detailed specification of the services offered nor any price information; it only emphasized that the prospective customers should call a toll free number to obtain such services. According to Complainant it can be concluded that Respondent is not using the Domain Name to make a bona fide offering of goods or services. According to Complainant Respondent has registered and is using the Domain Name in bad faith. Respondent was clearly aware of Complainant’s trademarks before the registration of the Domain Name as follows from Respondent’s explicit references on its prior website to Complainant’s trademark and its antivirus software. Complainant submits that Domain Name is used in bad faith by Respondent as it may have been intended to reach Complainant’s customers and offer them the identical (and therefore competing) services as offered by Complainant. This could incorrectly suggest that Respondent operates as an affiliate or a partner of Complainant. With regard to the fact that the Domain Name is currently inactive, Complainant submits that according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the non-use of a domain name (including a blank page) would not prevent a finding of bad faith under the doctrine of passive holding. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions: a. the domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1(a) under II of the Regulations; and b. the respondent has no rights to or legitimate interests in the domain name; and c. the domain name has been registered or is being used in bad faith. As Respondent has not filed a Response, the Panel shall rule based on the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact. A. Identical or Confusingly Similar Pursuant to article 2.1(a) of the Regulations, Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which Complainant has rights. Complainant has established that it is the owner of an International trademark registration for AVAST, which registration is also applicable in the Benelux. The Domain Name incorporates the entirety of the AVAST trademark as its distinctive element. Many decisions under the Regulations have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the trademark in its entirety. The addition of the descriptive words “contactnederland” in the Domain Name can be disregarded. The country code Top-Level Domain “.nl” may be disregarded for purposes of article 2.1(a) of the Regulations, see Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008. The Panel finds that the Domain Name is confusingly similar to Complainant’s AVAST trademark. B. Rights or Legitimate Interests In the Panel’s opinion, Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Based on the undisputed submission and evidence provided by Complainant the Domain Name currently does not resolve to an active website. At different times the Domain Name resolved to a website offering customer support service concerning Complainant’s AVAST software. Respondent created the impression of cooperating with Complainant by using Complainant’s AVAST trademark on his website and using Complainant’s orange colour. The website to which the Domain Name resolved stated in the Dutch and English language: “Neem contact op met de klantenservice van Avast door ons Klantenservice telefoonnummer te bellen; [translation: Contact the Avast Customer Service by calling the Customer Service phone number].” However, the website under the Domain Name did not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the well-known AVAST trademark, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has he acquired any trademark or service mark rights. The Panel does not consider such use a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. No Response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case. Under these circumstances the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith The Panel finds that the Domain Name has been registered and is being used in bad faith. Considering the distinctiveness of Complainant’s trademark the Panel finds that Respondent knew or should have known of Complainant’s rights. This is also suggested by Respondent’s choice of registration, namely of a term which includes Complaint’s entire trademark. The Panel notes that currently the Domain Name does not resolve to an active website. It is well established that non-use of a domain name does not prevent a finding of bad faith use under the doctrine of passive holding (see section 3.3. of the WIPO Overview 3.0)1 . The Panel also notes and accepts the undisputed submission of Complainant that the Domain Name resolved to a website which may have been intended to reach Complainant’s customers and offer them the identical services as offered by Complainant on its website. This could incorrectly indicate that Respondent is an affiliate or a partner of Complainant. In addition, the Panel notes that the Domain Name incorporates Complainant’s well-known trademark AVAST in its entirety, which indicates, in the circumstances of this case, that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to his website through likelihood of confusion which may arise with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of his website or other online location or of a service on his website or location, which constitutes registration and use in bad faith. 7. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, Dinant T. L. Oosterbaan 1 In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008‑0050).
Panelist
Date: June 29, 2020
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