WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trend Micro Kabushiki Kaisha, Trend Micro Incorporated v. Unasi, Inc
Case No. D2005-0838
1. The Parties
The Complainant is Trend Micro Kabushiki Kaisha , Shinjuku MAYNDS, Tokyo, Japan, Trend Micro Incorporated, Cupertino,CA, United States of America, represented by Carr & Ferrell, LLP, United States of America.
The Respondent is Unasi, Inc, Panama, Panama.
2. The Domain Names and Registrar
The disputed domain names:
are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2005. On August 4, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On August 6, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3l, 2005.
The Center appointed Ross Carson as the sole panelist in this matter on September 13, 2005. 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 Background
Founded in 1988, in Cupertino, California, Trend Micro Incorporated is a global leader in network antivirus and internet content security software and services and its products are sold through an extensive global network. The Complainant’s security software and services are used by businesses and individuals on five continents and the company employs over 2,600 people in more than 30 countries. In 2004, Complainant’s revenues surpassed previous years at 62.05 billion Yen or about $587.4 million dollars U.S., and the company is publicly traded on the Tokyo Stock Exchange and NASDAQ. Complainant’s world headquarters are located in Tokyo, Japan and its U. S. headquarters are located in Cupertino, California.
Complainant’s PC-CILLIN software is recognized as a leading antivirus software product. In 2004, PC World, a well-known U. S. technology magazine, honored Trend Micro’s PC-CILLIN software with its “World Class” award, for the best antivirus software solution.
Complainant owns all rights in and to the TREND MICRO mark, the TREND MICRO (& Design) mark, and the Trend Micro trade name in the U.S. and abroad. Trend Micro has established a global trademark portfolio covering these valuable trademarks and owns trademark registrations or applications for TREND MICRO and TREND MICRO (& Design) in more than 30 countries. (Exhibits D and E to the Complaint).
Complainant has used the TREND MICRO trademark and trade name since at least as early as 1996 in the United States and owns an incontestable U. S. trademark registration for this mark, U. S. Registration No. 2,158,508. This registration was granted incontestable status by the United States Trademark Office on December 15, 2004. (See attached copy of the U. S. Certificate of Registration and Acceptance of Declaration Under Section 15 granting Incontestable status, attached as Exhibit F to the Complaint.)
Complainant is the owner of the well-known and distinctive PC-CILLIN trademark. The Complainant has taken steps to protect and enforce its PC-CILLIN mark around the globe and has secured trademark applications or registrations for PC-CILLIN in over 30 countries. (Exhibit G to the Complaint.) Complainant has used the PC-CILLIN mark continuously for over 15 years and registered the mark with the United States Patent and Trademark Office on July 25, 2000. (Attached as Exhibit H to the Complaint is a true and correct copy of the Certificate of Registration for U. S. Registration No. 2,370,062.) Trend Micro has invested thousands of dollars to maintain the high visibility and reputation of its PC-CILLIN mark.
Complainant has an established presence on the Internet providing TREND MICRO and PC-CILLIN brands online. Complainant has operated a website at TrendMicro.com since at least as early as May 1997, a copy of the homepage at TrendMicro.com from June 2005, and from May 1997 is attached as Exhibit I to the Complaint. Complainant offers online web-based virus scanning services as part of its proprietary HOUSECALL service at the domain housecall.trendmicro.com. (Exhibit J to the Complaint).
In addition to the www.trendmicro.com domain, Complainant owns the domain <trendmicro-europe.com> and uses this domain to display localized websites for its European customers. (Exhibit K to the Complaint, showing the “www.trendmicro-europe.com”. gateway website and the Whois records for the same showing registration on November 23, 2001.) Similarly, “www.trendmicro-middleeast.com” offers customers in those regions access to information about Trend Micro products and services in local languages. (Exhibit L to the Complaint showing the “www.trendmicro-middleeast.com” domain and the Whois records for the same showing registration on October 31, 2002.)
The Complainant also owns the PCCILLIN.COM and PC-CILLIN.COM domain names, which redirect to the relevant portion of the <trendmicro.com> website. (Exhibit M to the Complaint.)
5. Parties’ Contentions
The domain names <pccillen.com>, pccillon.com> and <pcillian.com>, which are in dispute, are slight misspellings of the Complainant’s PC-CILLIN trademark. The Complainant submits that the .com suffix does not factor into the overall analysis of confusingly similar and further submits that the domain names <pccillen.com>, <pccillon.com> and <pcillian.com> are confusingly similar to the Complainant’s trademark PC-CILLIN.
The Complainant submits that the domain names <trendmico.com>, trendmicroeurope.com>, <trendmicrosystems.com>, <trendmirco.com> and <trenmicro.com> are either the Complainant’s trademark TREND MICRO plus a generic term or a misspelling to the Complainant’s trademark TREND MICRO. The Complainant submits that the above referred to domain names are confusingly similar to the Complainant’s TREND MICRO trademark.
Respondent Has No Rights Or Legitimate Interest
Complainant submits that consideration of the following objective indicia demonstrates the absence of any right or legitimate interest on the part of the Respondent in the domain names in dispute: (1) the domain names in dispute do not reflect Respondent’s company name as registered with the domain registrar or as identified on any website associated with the domain names in dispute; (2) the domain names in dispute do not reflect Respondent’s personal name as registered with the domain registrar or as identified on any website associated with the domain names in dispute; (3) the domain names in dispute do not reflect any present trademark or service mark of Respondent for TREND MICRO or for PC-CILLIN; (4) the manner of use of the domain names in dispute cannot be characterized as a noncommercial fair use; (5) there is no business relationship between Complainant and Respondent. The Respondent has no right to, or legitimate interest in the domain names in dispute under section 4(a)(ii) of the Policy.
Respondent Registered and Is Using the Domain Names in Bad Faith
Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate both (1) registration and (2) use of the Domains in bad faith.
Registration in Bad Faith
Paragraph 4(b)(ii) of the Policy provides for a showing of bad faith when the Registrant has “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 [Registrant has] engaged in a pattern of such conduct.”
Respondent has a well-documented history of registering domain names which are variations and slight misspellings of well-known trademarks and trade names. This pattern of behavior, plus the selection of domain names so close to Complainant’s trademarks demonstrates bad faith under the Policy. Respondent’s current name is listed in the Whois record of August 2, 2005, as Unasi, Inc., of Galerias Alvear 3, Zona 5, Panama 5235, Panama. No stranger to UDRP cases, Unasi, Inc. or Unasi Management, Inc, of Galerias Alvear 3, Via Argentina 2, Oficina #3, Zona 5, Panama 5235, recently lost a UDRP complaint filed against it by Wells Fargo and Company. The decision, issued June 17, 2005, ordered the transfer of 15 names involving various misspellings of WELLS FARGO from DotRegistrar and Unasi Management, to the complainant, Wells Fargo and Company. (NAF Claim Number: FA0505000471513, June 2005.) Unasi Management has also recently lost UDRP cases to Morgan Stanley (NAF Claim Number: FA0505000470488, June 2005), Red Bull (WIPO Case No. D2005-0304 June 2005), and Neiman Marcus (NAF Claim Number: FA0505000470918, May 2005).
Complainant states Panelists have found that bad faith in registration can be inferred when the registration involves a well-known mark. “Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith.” See The Caravan Club v. Mrgsale, NAF Case No. NAF/FA95314, August 2000). Even if the Respondent’s long history of cyber squatting is overlooked, bad faith registration can be inferred because of Respondent’s selection of the domain names in dispute which incorporate or constitute misspellings of Complainants well known TREND MICRO and PC-CILLIN trademarks.
Used in Bad Faith
Complainant states that Respondent has activated and used the domain names in dispute in connection with the display of advertising and links to competing software.
In February of 2004 the domain names <trendmicrosystems.com>, <pccillen.com> and <pcillian.com> directed the internet user to websites which displayed a generic internet search page with categories such as “Travel,” “Health and Beauty,” “Financial Planning,” “Health Products,” “Business and Finance,” and “Sports Tickets.” (see Exhibit R to the Complaint, showing the three websites and advertisements generated by each one.)
In February of 2004 the domain names <trendmirco.com>, <trendmico.com>, <trenmicro.com>, and <pccillon.com> directed the Internet user to websites purported to be an internet search tool and offered prominent links to “free virus scanning software” and Complainant’s competitor’s software, McAfee. (see Exhibit S to the Complaint.)
While this misdirection to a website wholly unrelated to Trend Micro or its PC-CILLIN product would no doubt frustrate customers seeking Complainant on the Internet, Registrant took advantage of this misdirected traffic to launch multiple advertisements from the website. (see Exhibits R and S to the Complaint for printouts of each website associated with these domain names, from February 5, 2004, showing the search page and ensuing advertisements.) Upon visiting the websites persistent “mouse trapping” advertisements were launched in multiple new windows of the visitor’s web browser. Once launched, it was impossible to stem the proliferation of new ads without completely closing out all browser windows. Thus, even if customers realized they had mistyped the domain for Trend Micro or PC-CILLIN, in order to exit the offending ads and incorrect site, the browser would have to be completely shut down, re-launched, and a new search for Complainant would have to begin.
As of June 26-June 27, 2005, all the domain names in dispute redirect to a website at <trendmirco.com> (Exhibit T to the Complaint.) The central website at “trendmirco” displays a list of links to sites selling anti-virus software, including competitors of Trend Micro, such as Norton and McAfee. (Exhibit U to the Complaint.) Respondent, however, has no affiliation with Trend Micro, and has never been authorized to sell or distribute Trend Micro products of any kind.
At no time has Respondent used, or been authorized to use, the TREND MICRO or PC-CILLIN trademarks. Such usage of a trademark-based domain name to divert potential customers to the trademark holder’s competitor, in wanton disregard for trademark rights, constitutes a classic case of bad faith use of a domain name, as Complainant is prevented from using the Domains to reflect its own trademarks.
Paragraph 4(b)(iv) of the Policy states that bad faith by the registrant may be proven if, “by using the domain name, [registrant] has intentionally attempted to attract, for commercial gain, Internet users to [registrant’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [registrant’s] website or location or of a product or service on [its] website or location.” Complainant submits that in this case, Respondent has intentionally attempted to attract Internet users to Respondent’s website, apparently for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
Complainant further submits that inasmuch as Respondent has never been authorized to use The Trend Micro or PC-CILLIN trademarks the most plausible explanation for Respondent’s registration of the domain names in dispute is an intention to divert internet users seeking Complainant’s site to Respondent’s website associated with the domain name <trendmirco.com>. Respondent cannot deny knowledge of the well-known TREND MICRO and PC-CILLIN trademarks. On the contrary, it is evident that the purposeful selection of the domain names in dispute was motivated entirely by a desire to capitalize on the widespread recognition of the TREND MICRO and PC-CILLIN brands. TREND MICRO and PC-CILLIN are distinctive, unique words and the only logical conclusion is that Respondent intentionally registered the domain names in dispute in a brazen attempt to trade on the established goodwill of these well-known marks and to lure customers seeking to find Complainant’s sites by using a confusingly similar domain name.
The Complainant further submits that Internet users are likely to be confused as to the source, sponsorship, affiliation or endorsement of the domain names in dispute. Users would logically expect to find content concerning Complainant and Complainant’s products such as its PC-CILLIN software at the domain names in dispute. Instead visitors to these web addresses see Respondent’s links to competing software products that have no affiliation with Complainant, contrary to the implication of the domain names in dispute. The initial confusion experienced by Internet users satisfies the legal requirements for likelihood of confusion under a theory of “initial interest confusion.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii) Respondent has no rights or legitimate interests in respect of the domain name; and
iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established by evidence that it is the owner of the registered trademarks TREND MICRO and TREND MICRO & design registered for “computer software for network security, network management protection and recovery from computer viruses….”The trademarks have been registered or applied for in numerous countries throughout the world. The trademarks TREND MICRO and TREND MICRO & design have been widely used in association with the goods and services for which it is registered throughout the world. The Complainant has also established by evidence that it is the registered owner of the trademark PC-CILLIN registered in relation to goods and services “computer utility and antivirus software, and user manuals supplied as a unit therewith. The trademark PC-CILLIN has been widely used and advertised in many countries in association with the goods and services for which it is registered.
The domain names in dispute that Respondent registered are confusingly similar to Complainant’s TREND MICRO, TREND MICRO & design or PC-CILLIN trademarks as the disputed domain names are either various typo squatted spellings or a combination of the Complainant’s trademark with a geographical term “Europe” or the generic term “systems”. See America Online Inc. v. DuSung Group, WIPO Case No. D2000-1523.
The “.com” portion of the domain names in dispute does not match any of Complainant’s trademarks. It is well-settled under previous cases decided under the Policy that the generic suffix “.com” does not detract from the overall impression of the dominant portion of the domain. See Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S & S Enterprises Ltd., WIPO Case No. D2000-0802.) Average consumers will not carefully differentiate between <trendmico.com> on the one hand, and the TREND MICRO trademark on the other.
The Panel finds that considering that the domain names in dispute are either slight misspellings of TREND MICRO and PC-CILLIN, or are comprised of TREND MICRO plus a generic term, and considering that the .com suffix does not factor into the overall analysis, the domain names in dispute are essentially identical, or confusingly similar, to Complainant’s TREND MICRO or PC-CILLIN trademarks.
B. Rights or Legitimate Interests
Under Paragraph 4(a)(ii) of the Policy, the ultimate burden of proof on the issue of whether Respondent has “no rights or legitimate interests in respect of the domain name” rests with Complainant. However, because there is no compulsory process for discovery in this proceeding, Complainant cannot exhaustively investigate Respondent’s motivations. Paragraph 4(c) of the Policy implies that Respondent bears the burden of production of evidence that is uniquely within its control. Complainant therefore satisfies its obligation under the Policy, and establishes a prima facie case that Respondent has “no rights or legitimate interests in respect of the domain name,” by demonstrating the absence of objective indicia of such rights or interests. To conclude otherwise would be to impose on Complainant an impossible burden to “prove a negative.” The Panel agrees with reasons of the Panel in At Home Corporation v. John Zuccarini, WIPO Case No. D2000-1524, where the Panel stated: “Furthermore, this Panelist agrees with [complainant] At Home’s position that, even if Paragraph 4(a) of the Policy places the entire burden of persuasion on the complainant, Paragraph 4(c) of the Policy strongly implies that the respondent does have the burden of production, at least with respect to evidence that is in its sole possession and, given the absence of discovery in UDRP proceedings, unavailable to the complainant. Further support for this position can be found in Paragraph 5 of the Rules, which requires a respondent to affirmatively respond to the complainant’s allegations and permits a panel to draw such inferences from failure to so respond as it considers appropriate.”
The Panel finds that the following facts in the absence of evidence to the contrary demonstrate the absence of any rights or legitimate interests on the part of the Respondent in the domain names in dispute: (1) the domain names in dispute do not reflect Respondent’s company name as registered with the domain registrar or as identified on any website associated with the domain names in dispute; (2) the domain names in dispute do not reflect Respondent’s personal name as registered with the domain registrar or as identified on any website associated with the domain names in dispute. (3) The domain names in dispute do not reflect any present trademark or service mark of Respondent for TREND MICRO or for PC-CILLIN; (4) the manner of use of the domain names in dispute cannot be characterized as a noncommercial fair use; and (5) there is no business relationship between Complainant and Respondent.
The Panel concludes that the Complainant has established on a balance of probabilities that the Respondent has no rights or legitimate interests in the domain names in dispute under Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Registrant registered the domain names in dispute after the Complainant had widely used its trademarks MICRO TREND, MICRO TREND & design and PC-CILLIN and registered said trademarks. The Respondent has been involved in many mandatory administrative procedures involving over fifty domain names confusing with the well known trademarks of others registered in relation to a wide range of goods and services. All these proceedings terminated with the transfer of the disputed domain names to the Complainants. See State Farm Mutual Automobile Insurance Company v. Unasi Management, Inc., NAF Claim No. FA050500472028; M Shanken Communications, Inc. v. Unasi Inc., NAF Claim No. FA0507000515000; Geanfranco Ferre S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622. The Panel finds that the Respondent registered the domain names in dispute comprised of misspellings or additions of geographical or descriptive suffixes to Complainant’s registered trademarks with full knowledge of Complainant’s rights in its trademarks.
The Respondent has diverted business from the Complainant to competitors websites by using links which resolve to competitors websites, which constitutes bad faith use of the domain names in dispute in violation of Paragraph 4(b)(iii) of the Policy. See Puckett v. Miller, WIPO Case No. D2000-0297.
The Respondent has used the domain names in dispute to divert Internet users seeking the Complainant’s websites to Respondent’s website, which features pop-up advertisements that capture the Internet user. The Panel concludes that Respondent receives click through fees by diverting such Internet users to the pop-up ads or Complainant’s competitors. Such activities constitute registration and use of the domain names in dispute which are confusingly similar to Complainant’s trademarks to attract internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s trademarks in bad faith as set out in Paragraph 4(b)(iv) of the Policy.
The Panel concludes that the Complainant has proven that the domain names in dispute have been registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraph’s 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <pccillen.com>, <pccillon.com>, <pcillian.com>, <trendmico.com>, <trendmicroeurope.com>, <trendmicrosystems.com>, trendmirco.com> and <trenmicro.com> be transferred to the Complainant.
Dated: September 25, 2005