The Complainant is Kaspersky Lab, Inc., Woburn, Massachusetts, United States of America(“United States”), represented by Morse, Barnes-Brown & Pendleton, PC, United States.
The Respondent is Jianjun Wang, Shanghai, the People's Republic of China;
The disputed domain name <getkaspersky.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2008. On October 8, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 8, 2008, GoDaddy.com, Inc. 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 13, 2008 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 14, 2008. The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2008.
On October 17, 2008, the Center received an email communication from Domains By Proxy stating that they were in receipt of the fax relating to the Notification of Complaint and that Domains By proxy is not the registrant of the domain name as it appeared that the Complaint had been filed against it. The Center acknowledged receipt of the above-mentioned email and advised that in such privacy shield cases, the Center's procedure is to invite the Complainant to file an amendment to the Complaint which would typically contain the additional information provided by the Registrar. The Center further advised that as it appeared that the Complainant had elected to retain the privacy shield provider as one of its Respondents any further determination as to the proper identity of the Respondents would be at the sole discretion of the Panel on appointment. Having regard to the circumstances of this case, the Panel shall treat Jianjun Wang as the Respondent.
In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 7, 2008.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on November 18, 2008. 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.
On December 2, 2008, the Center issued Administrative Procedural Panel Order No. 1, requesting the Complainant, pursuant to paragraph 12 of the Rules, to submit a further statement and/or exhibits as to the rights within the meaning of paragraph 4(a)(i) of the Policy in the registered trademarks owned by Kaspersky Lab Zao (annexed as Exhibit C to the Complaint), including a copy of the Exclusive Distribution Agreement between the Complainant and the trademark holder, Kaspersky Lab Zao, as referred to in the Complaint.
On December 9, the Center acknowledged receipt of an email communication from the Complainant attaching a redacted copy of a distribution agreement between Kaspersky Lab Zao and the Complainant.
The Complainant benefits from a non-exclusive distribution agreement with Kaspersky Lab Zao, a company of Moscow, Russian Federation. The latter is the owner of the United States federal trade mark registrations for KASPERSKY K ANTI-VIRUS and design (No. 2756752, registration date August 26, 2003); KASPERSKY LAB & design (No. 2854174, registration date June 15, 2004) and KASPERSKY (No. 2818639, registration date March 2, 2004) ( the “KASPERSKY marks”). All these marks are registered in relation to goods and services in International Classes 009, 016 and 042.
The disputed domain name was registered on June 2, 2008.
The Complainant asserts that it is widely known by consumers and industry professionals as a leader in the field of anti-virus software and services. Due to its network of thousands of resellers, and extensive amounts expended on promotion and building brand recognition, the Complainant asserts that the KASPERSKY marks are considered famous.
Further the Complainant contends that the disputed domain name is highly similar to the KASPERSKY marks. The only difference is the incorporation of the term “get”. The disputed domain name is visually and phonetically so comparable as to be undoubtedly confusingly similar.
The Complainant asserts that it has the exclusive rights to use the KASPERSKY marks and distribute and authorize resale of Kaspersky goods in the United States and Canada, and has not authorized the Respondent to use any of the relevant marks. It asserts that the Respondent has no registered or common law rights in the marks. The Complainant's rights in the KASPERSKY marks predate the registration of the disputed domain name.
The Complainant asserts that due to the fame of the KASPERSKY marks no individual would register the disputed domain name unless it was with the intention to create the impression of some affiliation or endorsement with the Complainant or its anti-virus goods or services. The registration creates a prima facie presumption that the Respondent's intention was to create consumer confusion and siphon off the Complainant's goodwill for its own commercial gain. The Complainant cites Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo WIPO Case No. D2001-0020, in support.
There is, according to the Complainant, no bona fide use of the KASPERSKY marks by the Respondent, as using somebody else's mark where the website owner has no registered or common law rights in a mark is clearly not bona fide use. The Respondent has no rights in the mark and only the Complainant can authorize use of the relevant marks in the United States and Canada. The unauthorized use of the KASPERSKY marks has the effect of redirecting traffic away from the Complainant and its authorized retailers, which results in lost sales for legitimate users of the KASPERSKY marks and thus disrupts the business of such users.
The Complainant asserts that the fame of the KASPERSKY marks and the references to those marks on the Respondent's website, where it is selling what it claims to be Kaspersky software, illustrates that the Respondent was not ignorant of the fact it is blatantly misappropriating the intellectual property rights of the Complainant. The Complainant asserts that it is plain to see that the Respondent is using the disputed domain name to disrupt the Complainant's business and that of its authorized resellers and retailers. Actions that create or tend to create violations of the law cannot be considered bona fide.
Further the Complainant asserts that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent's web site 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 the Respondent's web site or location or of a product or service on the Respondent's web site or location (Policy paragraph 4(b)). It has proffered no bona fide offering of goods or services, has not commonly been known by the disputed domain name, and has without question used the disputed domain name for illegitimate commercial purposes.
The Respondent did not reply to the Complainant's contentions.
In accordance with the Policy the Complainant must establish that it has rights in the trade marks to which the disputed domain name is said to be identical or confusingly similar. In this case the Complainant is not the registered owner of the above-mentioned KASPERSKY trade marks registered in the United States. The Complainant has also not submitted any express proof that the trade mark owner Kaspersky Lab Zao of Moscow, Russian Federation consents to a possible transfer of the disputed domain name to the Complainant.
The Complainant instead seeks to rely on its contractual relationship with Kaspersky Lab Zao, the registered owner of the relevant United States marks. For that purpose the Complainant has submitted a scanned copy, redacted for the sake of confidentiality, of its distribution agreement with the trade marks' owner. This agreement is titled “Non exclusive distribution agreement”. The substance of the provisions confirms that it concerns a non-exclusive agreement granting the Complainant the right to market and supply Kaspersky goods and services in North America. However, the agreement also grants the Complainant a non-exclusive license to use the Kaspersky trade marks within North America (Clause 2.1, Grant of Rights). By another clause (7.1) the agreement recognizes implicitly that Clause 2.1 creates a right, if limited, in the relevant trade marks. The agreement was entered into on January 4, 2005 and is valid until December 31, 2008, whereupon it is subject to consecutive annual terms of renewal.
The majority panel view is that even a non-exclusive licensee of a trade mark may have a relevant right in the trade mark at issue for purposes of the Policy. In this case the Complainant benefits from such a license, and also goes by substantially the same name (Kapsersky Lab, Inc.) as the owner of the registered marks, with whom it is in a substantive commercial relationship. The Complainant's company name obviously also incorporates the KASPERSKY trade mark. The Complainant asserts that it in fact distributes the Kaspersky goods in North America on an exclusive basis and has a network of resellers and retailers for that purpose. In the Panel's view the Complainant's rights in the marks are sufficiently established to warrant consideration of the Policy elements.
In the circumstances the Panel is satisfied that the Complainant has rights in the relevant trade marks.
The disputed domain name is not identical to the KASPERSKY trade mark, as it differs by the incorporation of the term “get”, and the addition of the TLD “.com”. The latter is of no consequence, as is well recognised. Further, the inclusion of a generic term, a fortiori one like “get” which is associated with purchasing or acquiring goods under the trade mark, is not sufficient to distinguish the disputed domain name from the KASPERSKY mark. Numerous panel decisions have recognized that inclusion of a generic term is not normally apt to dispel confusing similarity.
Therefore the Panel holds that the disputed domain name is confusingly similar to the trade mark KASPERSKY in which the Complainant has rights.
The Respondent is not known by the disputed domain name. The Respondent did not file a Response to the Complaint, so there is no evidence before the Panel that the Respondent has been granted any rights in the disputed domain name or in the KASPERSKY trade marks. The Complainant asserts that it has granted no such right or given no interest in the KASPERSKY marks or in relation to Kaspersky goods or services to the Respondent.
Nor has the Respondent on the available record, before notice of this dispute, used or made demonstrable preparations to use the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. A screen shot, of October 17, 2008, of the website to which the disputed domain name then resolved made reference to the sale of Kaspersky products and made heavily discounted versions of what are apparently or allegedly Kaspersky products available for download. It provided an email address offering client support. When the Panel accessed the relevant website on December 11, 2008, it displayed the following statement: “Our sale is over now; join us below, you will be noticed when it is back” and below it a box to “subscribe” by supplying name and email address. None of this amounts to bona fide offering of goods or services. The use, by incorporation into a domain name, of another's trade mark for the purpose of establishing a suspect and unauthorised on-line retailing operation of the kind described clearly relies on the misleading imputation of some authorization or affiliation with the KASPERSKY marks to pursue financial or commercial gain.
Nor is there any evidence that the Respondent is 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.
Therefore the Panel holds that the Respondent has no rights or legitimate interest in the disputed domain name.
The KASPERSKY trade mark is distinctive and it is unlikely that the disputed domain name would have been chosen in ignorance of the mark's existence. Further, the incorporation of the term “get” tends to indicate that the registrant was perfectly aware of the KASPERSKY trade marks, and the goods and services supplied under them. The Complainant further asserts that it has a very wide distribution network in the United States and that due to its promotional activities the KASPERSKY marks were well-known in that country before the date of registration of the disputed domain name, which is quite recent. This assertion is obviously not contested by the Respondent. Therefore the Panel is persuaded that the disputed domain name was registered in bad faith.
There is no evidence before the Panel that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. Nor is it contended by the Complainant that the Respondent has registered the disputed domain name in order to prevent it from reflecting the mark in a corresponding domain name, or that the Respondent has engaged in a pattern of such conduct.
However, the Complainant does assert that the Respondent has registered the domain name primarily for the purpose of disrupting the business of the Complainant and its authorized resellers and retailers. The Complainant asserts that the redirection of consumer traffic to the Respondent's website results in lost sales for legitimate users of the KASPERSKY marks, thereby disrupting their businesses. However, the evidence put before the Panel is not sufficient for it to form a concluded view on this matter, or how the registration of the disputed domain name results in the disruption of the business of the Complainant itself. Be that as it may, bad faith use may also be found if a Panel is persuaded that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 the Respondent's web site or location or of a product or service on the Respondent's web site or location. In the circumstances of this case the Panel is of the view that paragraph 4(b)(iv) of the Policy is indeed fulfilled in this matter. The misleading implication reasonably open to Internet users is that the “www.getkaspersky.com” website is in some way authorized by or affiliated with Kaspersky, Inc, i.e. is in some way an “official” website. That is not the case. Clearly, since various allegedly Kaspersky products are or were, and may be again offered for sale at the relevant website, it is reasonable to conclude that the Respondent is attempting to attract Internet users for commercial gain.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <getkaspersky.com> be transferred to the Complainant.
William A. Van Caenegem
Dated: December 11, 2008.