WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ikarus Security Software GmbH v. Above.com Domain Privacy / Contact ID 9668727 Host Master, Transure Enterprise Ltd
Case No. D2011-1287
1. The Parties
The Complainant is Ikarus Security Software GmbH of Vienna, Austria, represented by Freimüller/Obereder/Pilz & Partner Rechtsanwälte GmbH, Austria.
The Respondents are Above.com Domain Privacy of Victoria, Australia / Contact ID 9668727 Host Master, Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ikarus-security.com> (the “Domain Name”) is registered with Above.com, Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2011. On July 27, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 28, 2011, 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 August 3, 2011 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 amendment to the Complaint on August 5, 2011.
On August 5, 2011, 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”).
The undersigned Panel has independently determined and agrees with the Center’s assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and 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 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2011.
The Center appointed Pedro W. Buchanan Smith as the sole panelist in this matter on September 6, 2011. 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.
The Panel has not received any further requests from the Complainant or the Respondent regarding submissions or waivers, extensions of deadlines and the Panel has not found it necessary to request any further information, statements or documents from the Parties, nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of this proceeding is English, pursuant to paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is the proprietor of the European community figurative trademark IKARUS SECURITY SOFTWARE and of the European community word trademark IKARUS. Since December 2008, and December 2000, respectively, the Complainant owns the registrations of the said marks in respect of the Nice classification of goods and services in classes 9, 16, 35, 38, 41 and 42 as stated in the enclosed copy of the trademark register entries attached to the Complaint as Annexes 4 and 5.
The Complainant is a software vendor from Austria that mainly focuses on antivirus and content-security solutions and that was one the of world’s first antivirus-software providers. Since its establishment in 1986, the Complainant has successfully developed security solutions. The Complainant is constantly investing into software-specific research and development, has concluded partnerships and special agreements with security experts in many countries all over the world and exchanges virus-specific information with other research institutions and experts from all over the world every day. Furthermore the Complainant offers a wide range of antivirus-software programs for private households, as well as for small and medium sized enterprises and renowned multinational corporations. In addition, the Complainant offers training courses for employees of their contracting parties. Also, the Complainant is the registrant of the domain name <ikarus.at>. Many of the products offered by the Complainant can be ordered on the website at the domain name, as evidenced by Annexes 7 and 8 to the Complaint.
As a result, the Complainant’s community trademarks are protected for “data processing apparatus and computers” (class 9), “operating handbooks (manuals) for software applications” (class 16) “advertising, business consultancy, in particular in connection with virus protection programs; planning and implementing of virus protection strategies” (class 35), “telecommunications, telephone hot-line support services for virus detection and removal” (class 38); “personal training” (class 41) “and computer programming, installation and maintenance of virus protection programs” (class 42). A full description (including explanatory notes) of the Nice classification of goods and services (OHIM has adopted the use of the Nice classification and makes its use mandatory for applications of a community trademark) was attached as Annex 6 to the Complaint information.
5. Parties’ Contentions
The Domain Name <ikarus-security.com> is confusingly similar to the Complainant’s trademark IKARUS SECURITY SOFTWARE.
In order to determine the degree of similarity between the trademarks, especially between the IKARUS SECURITY SOFTWARE and the Domain Name – the visual, oral or conceptive similarities of the marks are to be taken into account. They are visually very close to another, the only difference being “ikarus” written in small letters respectively “Ikarus” written in capital letters and the hyphen between the words “ikarus-security” in the Domain Name. Phonetically the Domain Name and the trademark are completely identical. The addition of the word “software” in the Complainant’s trade mark “IKARUS Security Software” does not detract from the similarity of the Domain Name, as it is only descriptive. As a result the resemblance of the Domain Name and the trademark are highly likely to induce confusion in the public’s mind as the Domain Name contains two words (“ikarus security”) of the Complainant’s trademark, even in the same order.
To the Complainant’s best knowledge, the Respondent is neither commonly known under the relevant Domain Name or under the name “ikarus-security”, nor has he registered a corresponding trademark. Also, there is no evidence that the Respondent uses or prepares to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services. Also, the Complainant has never given any license or authorization to the Respondent to use the Complainant’s trademarks or any other confusing signs, or to register any domain name incorporating the Complainant’s trademarks or any other confusing signs. Also, the Respondent must have had actual knowledge of the existence of the Complainant, its activities and its rights prior to registration and use because the Complainant has already used its trademarks and website “www.ikarus.at” for several years at the time of registration of the Domain Name.
These web pages linked to the Domain Name show that the website only functions as a link farm, that has no respectively very little original content but consists of only sponsored hyperlinks to various other websites. The registration of a domain name containing a trademark that is used for link farm websites to redirect traffic for the respondent’s commercial gain through sponsored links is not recognized as a bona fide activity under paragraph 4(c) of the Policy.
Further, the Complainant has observed the Domain Name through half a year. During that time period, the Domain Name has constantly been detected as “harmful and dangerous” as it identified as a site that may install malicious software on computers, (as evidenced by Annexes 11 and 12 to the Complaint). As already described above, the Complainant focuses on antivirus and content-security solutions and is known all over the world for its antivirus-software. As a result the Domain Name and especially the detection as a site that may infect your computer with a virus, tarnishes the Complainant’s trademark, as well as its business and reputation. Also, the Complainant’s trademark in the Domain Name is likely to mislead the public and Internet users that the Domain Name refers to the Complainant. This is because the Respondent is not connected with the Complainant or its business in any way but uses the Complainant’s trademark in the Domain Name in a manner that is likely to mislead unsuspecting Internet users.
The Respondent registered and is holding the Domain Name to prevent the Complainant from registering it and seeks to benefit from those customers searching for the Complainant’s website. Customers who search for the Complainant and its products on the Internet get the impression of being an untrustworthy, dubious company, who, instead of offering quality antivirus products, installs malicious software on computers and who has connections to the pornographic business. Therefore, it is clear that the Respondent intended to target and disrupts the Complainant’s business.
Also the Respondent’s adoption of a domain name that is identical respectively confusingly similar to the Complainant’s trademarks is also indicative of bad faith. As a conclusion it is inescapable that the Respondent sought intentionally to come as close as possible to the Complainant’s trademark for the purpose of diverting Internet traffic from the Complainant’s website to the Respondent’s website for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel considers that the Respondent, by registering the Domain Name with the Registrar (an Internet Corporation for Assigned Names and Numbers –ICANN– accredited domain name registrar), agreed to be bound by all terms and conditions of the Registrar Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registrar Agreement by reference), which mandates that proceedings be conducted according to the Rules and the selected administrative dispute resolution service provider’s supplemental rules, in the present case being the Supplemental Rules. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner, by entering into the above mentioned Registrar Agreement, the Respondent agreed and warranted that neither the registration of its Domain Name nor the manner in which it may intend to use such Domain Name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, the Domain Name registration services may be suspended, cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the Parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the Parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the Parties be notified of the appointment of this Panel; and that both Parties be treated with equality in these administrative proceedings.
In the case subject matter of this proceeding, the Panel is satisfied that these proceedings have been carried out by complying with such fundamental due diligence requirements, and particularly concerning the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This Panel finds that the Domain Name <ikarus-security.com> is confusingly similar to the Complainant’s IKARUS SECURITY SOFTWARE trademark. The Complainant’s trademark was registered significantly earlier than the date of registration of the Domain Name <ikarus-security.com>.
In addition, the Domain Name <ikarus-security.com> comprises the Complainant’s IKARUS SECURITY SOFTWARE, with the addition of the hyphen between the words ikarus and security, and without the word software which is merely descriptive of the products involved. The composition of the Complainant’s trademark makes the Domain Name <ikarus-security.com> confusingly similar to the Complainant’s IKARUS SECURITY SOFTWARE trademark.
B. Rights or Legitimate Interests
This Panel finds, in general, from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that the Respondent has any rights or legitimate interests in connection with the Complainant’s IKARUS SECURITY SOFTWARE trademark nor with the Domain Name under dispute; that the Domain Name is being used to intentionally misdirect to the Respondent’s website visitors who attempt to visit the Complainant’s website; that the Respondent has not used nor prepared to use the <ikarus-security.com> Domain Name in connection with any good faith offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the Domain Name as contemplated under paragraph 4(c)(ii) of the Policy; nor 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 as contemplated under paragraph 4(c)(iii) of the Policy. The Panel therefore finds, that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds, from the information and facts that were analyzed, and from the lack of evidence to the contrary, that the registration and utilization of the Domain Name <ikarus-security.com> by the Respondent is in bad faith, in particular but without limitation, pursuant to paragraph 4(b)(iii) of the Policy as the Respondent has registered the Domain Name primarily with the deceitful intention of targeting and disrupting the business of a competitor, if not with the intention to severely damage Complainant’s reputation; and furthermore pursuant to paragraph 4(b)(iv) of the Policy, in view of the fact that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark, as to the source, sponsorship, affiliation, or endorsement of its website, and therefore has made a condemnable bad faith use of the Domain Name.
Therefore, and in consideration of the Complaint’s compliance with the formal requirements for this Domain Name dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in paragraphs 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel orders that the Domain Name <ikarus-security.com> be transferred to the Complainant.
Pedro W. Buchanan Smith
Dated: September 23, 2011