WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citrix Systems, Inc. v. PrivacyProtect.org / zmeutz s.r.l.
Case No. D2012-1534
1. The Parties
The Complainant is Citrix Systems, Inc. of Bedford, Massachusetts, United States of America (“U.S.”) represented by Burns & Levinson LLP, U.S.
The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia and zmeutz s.r.l. of Targu Frumos, Romania.
2. The Domain Name and Registrar
The disputed domain name <sharefilez.net> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2012. On July 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2012, 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 1, 2012, 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 August 7, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on August 29, 2012. The Respondent sent informal communications to the Center on August 29, 2012, and September 2, 2012.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on September 3, 2012. 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
In the absence of a formal Response from the Respondent, the Panel proceeds to determine this matter on the basis of the evidence adduced by the Complainant which it accepts as true.
According to the Complainant, it is an industry leader in the development, manufacture and distribution of remote access, collaborative tools, virtual desktop solutions and infra-structure systems.
On or about October 13, 2011, the Complainant acquired Novel Labs, Inc. (D/B/AShareFile) ("ShareFile"), a market leading provider of secure cloud-based data storage, sharing and collaboration. As a result of the Complainant's acquisition of ShareFile, the Complainant was assigned all right, title and interest in and to the trade mark SHAREFILE including two United States (“U.S.”) federal registrations for SHAREFILE. The Complainant has also applied to register the mark CITRIX SHAREFILE. Collectively, the acquired SHAREFILE marks and the new application, as well as the Complainant's and its predecessor's use of SHAREFILE at common law are referred to as the "SHAREFILE Marks."
Set out in the Complaint are a pending application and US federal registration for the marks SHAREFILE as follows:-
August 3, 2010
December 14, 2010
October 20, 2011 (filing date)
The Panel notes that copies of the trade mark registrations and application from the Unites States Patent and Trademark Office (“US PTO”) database are annexed at Annex D to the Complaint.
The Panel notes that the domain name in dispute was registered on September 11, 2009, which pre-dates any registered rights owned by the Complainant. However, the Complainant points out that since at least as early as January 2005, the Complainant, by itself or through its predecessor in interest has made extensive use of the SHAREFILE marks in connection with its and their products and services.
The Complainant invests large sums to promote and develop its marks through the Internet, radio and print media. Through extensive use from promotional activities, using the SHAREFILE marks, the Complainant's marks have become uniquely associated with the Complainant's products and services.
Currently, the Complainant has over 5 million users for its ShareFile branded services. The Complainant's virtualization, networking and cloud solutions deliver over 100 million corporate desktops and touch approximately 75% of Internet users each day. The Complainant partners with more than 10,000 companies in 100 countries.
In 2011, the Complainant's annual revenue was USD 2.21 billion. In November 2005, ShareFile launched its first fully functioning and publicly available version of the ShareFile branded service. In the six years following its initial release, ShareFile grew to almost 20,000 paying corporate customers and 5 million business users spread across more than 100 countries around the world.
The ShareFile branded service has won numerous awards including CNET's “Web Ware 100”. ShareFile was named one of “North Carolina's top 25 Companies to watch in 2010”; was twice named to Inc. Magazine's prestigious “Inc. 500 List of Fastest Growing Private Businesses” and was awarded two consecutive “Annual Quality Awards” from K2 Enterprises. True copies of articles detailing these awards are attached at Annex E to the Complaint. The Complainant has established a website at “www.sharefile.com”, which the Complainant uses to promote and sell its services. The “www.sharefile.com” website enables computer users to learn about and access the ShareFile brand services. A true copy of the home page of “www.sharefile.com” is attached as Annex F to the Complaint.
The Complainant adduces evidence set out at Annex G to the Complaint of the use of the domain name in dispute by the Respondent. It submits that the domain name in dispute is deceptive and misleading inasmuch as it points to a site entitled "SHAREFILE'Z" and offers a data sharing service that directly competes with the Complainant's ShareFile-branded service. In particular, it points out that the Respondent's website allows users to upload a file to be saved on the Respondent's server which then can be uploaded to numerous other free file hosts from which third parties may access the uploaded file. A true copy of the page that can be accessed when the user types in the domain name in dispute is annexed at Annex G.
5. Parties’ Contentions
The Complainant submits:
1. The domain in dispute is identical or confusingly similar to the SHAREFILE marks and the Complainant's Federally registered trade marks. It relies upon prior and extensive use of the mark SHAREFILE prior to the date of registration of the domain name in dispute. It submits that the domain in dispute is confusingly similar to the Complainant's marks SHAREFILE.
2. The Respondent has no rights or legitimate interests in respect of the domain name. It submits that the Respondent has no connection or affiliation to the Complainant and has received no licence or consent to use the mark SHAREFILE as part of the domain name in dispute.
3. The domain name in dispute was registered and used in bad faith. It submits that it is inconceivable that the Respondent was unaware of the Complainant's rights and that the Respondent had actual notice of the Complainant's rights as a result of widespread promotion of the mark SHAREFILE by the Complainant. It submits that the Respondent intentionally attempts to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant's SHAREFILE marks.
The Respondent did not formally reply to the Complainant’s contentions. On September 2, 2012, in an email communication to the Center the Respondent stated:
“I have this domain from 11-Sep-2009
Creation Date: 11-Sep-2009
Expiration Date: 11-Sep-2012
And CITRIX SHAREFILE trademark is from: 2011-10-20
how could I know, it will be over the years a trademark?”
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that although the Complainant does not have any relevant registered trade marks which pre-date the date of registration of the domain name in dispute, there is substantial evidence that since January 2005, the Complainant and its predecessors-in-interest have made extensive use of the SHAREFILE marks. Accordingly, the Panel finds that the Complainant has unregistered trademark rights in the SHAREFILE marks. The Complainant submits that the addition of the letter "z" to the mark SHAREFILE makes it "evident that the disputed domain name is confusingly similar to the SHAREFILE marks". The Panel accepts this argument. In the Panel's view, the dominant part of the domain name in dispute is "sharefile". The use of the suffix "z" is simply a phonetic version of the plural and is otherwise meaningless.
Accordingly the Panel finds that the domain name in dispute is identical or confusingly similar to the SHAREFILE marks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant relies upon the fact there is no evidence of any license or consent given by the Complainant to the Respondent to use the mark SHAREFILE. Moreover, the evidence shows that the Respondent uses the domain name in dispute to direct users to a website providing a service which directly competes with the Complainant's ShareFile branded service. On the evidence which is not contested by the Respondent, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the domain name in dispute. Accordingly, the Panel finds for the Complainant in this element.
C. Registered and Used in Bad Faith
The evidence before the Panel (and in the absence of a full Response) is that the Complainant had established unregistered rights in the mark "SHAREFILE" since 2005.
The Respondent in its brief statement asks "how could I know, it will be over the years a trademark?"
The Panel has taken into account the Complainant's evidence of the Respondent's use of the domain name in dispute as set out in Annex G to the Complainant. The Respondent appears to be offering a data-sharing service. Given the large scale of the Complainant's operation the Panel considers that there must have been a reasonable likelihood of the Respondent offering its competing data-sharing service whilst being aware of the Complainant's use of the SHAREFILE mark.
The Panel notes that at paragraph 37 of the Complaint, that the Complainant appears to rely upon its registered trade mark rights. In the Panel's view these rights, which post-date the date of registration of the domain name in dispute should not be taken into account in considering bad faith. The Panel nevertheless takes into account the Complainant's pre-existing unregistered rights in the SHAREFILE marks.
Taking these into account, along with the evidence that the Respondent was competing in a similar data-sharing activity the Panel finds that the Respondent's registration and use of the domain name in dispute shows that the Respondent is likely to have intended to misrepresent an association with the activities of the Complainant.
It follows that the Respondent intentionally attempted to attract for commercial gain, internet users by creating a likelihood of confusion with the SHAREFILE mark.
The Panel therefore reaches a finding of registration and use of the domain name in dispute in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name in dispute <sharefiles.net> be transferred to the Complainant.
Clive Duncan Thorne
Dated: October 17, 2012