WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citrix Online LLC v. Domain Admin-Private Registrations Aktien Gesellschaft
Case No. D2012-2090
1. The Parties
The Complainant is Citrix Online LLC of Goleta, California, United States of America, represented by Burns & Levinson LLP, United States of America.
The Respondent is Domain Admin-Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <gotoassist.org> is registered with PDR 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 October 19, 2012. On October 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 October 26, 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 October 30, 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 October 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2012.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on December 14, 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.
On December 28, 2012, the Panel issued the Administrative Panel Procedural Order No. 1, asking the Complainant to amend the Complaint, attaching registration certificates for the trademarks GOTOASSIST, GOTOASSIST PRO and GOTOASSIST EXPRESS, within 5 (five) days. The Complainant answered the Administrative Panel Procedural Order No. 1, attaching the referred trademark certificates, on December 28, 2012. The Panel was informed by the Center about the Complainant’s answer to the Administrative Panel Procedural Order No. 1on January 4, 2013.
4. Factual Background
The Complainant provides online solutions such as desktop virtualization and cloud computing technologies, including the GoToAssist service.
According to the Wikipedia1, GoToAssist is a cloud-based service that enables the user to access and control remote computers and other Internet-connected devices in order to deliver technical support. GoToAssist was released in 2000 and was the first Internet-based remote support tool. It is part of the “GoTo” family of products created by the Complainant.
The Complainant owns U.S. Registration for the marks GOTOASSIST, GOTOASSIST PRO and GOTOASSIST EXPRESS, which are used in connection with the GoToAssist services, as well as a family of other “GOTO” trademarks including, among others, GOTOMYPC, GOTOTRAINING, GOTOMEETING, and GOTOWEBINAR (see Annex D attached to the Complainant’s answer to the Administrative Panel Procedural Order No. 1).
The Complainant provides its services through a number of domain names, including the domain name <gotoassist.com>, acquired on June 2003.
The Respondent registered the disputed domain name <gotoassist.org> in August 2006.
The Panel accessed the website displayed at the disputed domain name on December 27, 2012, and there was a pay-per-click page with several links for remote access products and services, including products and services that compete with those offered by the Complainant.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is identical to the Complainant’s GOTOASSIST mark and confusingly similar to the Complainant’s other GOTO marks; the disputed domain name is a clever attempt to capture users who may be looking for Complainant’s GOTOASSIST product/services;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; the Respondent has no current connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the GOTOASSIST mark in a domain name or in any other manner; it is well settled that the acquisition of a domain name for the purpose of creating a page that links to sites and services that are competitive with the Complainant does not establish a legitimate interest in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith; the Respondent is deemed to have, at a minimum, constructive notice of the Complainant’s trademark rights by virtue of its federal registrations and applications for the GOTOASSIST marks; the Respondent is clearly attempting to benefit from the Complainant’s well-known GOTOASSIST mark to garner click through fees from links to third party sites, including those that compete with the Complainant; the disputed domain name is so obviously indicative of the Complainant’s products and services that the Respondent’s use of the disputed domain name would inevitably lead to confusion of some sort.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that “gotoassist” is an expression directly connected with the Complainant’s online services.
As stated above, Annex D attached to the Complainant’s answer to the Administrative Panel Procedural Order No. 1 demonstrates the first filing of the trademark GOTOASSIST on September 18, 2003.
The trademark GOTOASSIST is wholly encompassed within the disputed domain name. The addition of a generic top-level domain name extension “.org” is irrelevant when determining whether a disputed domain name is confusingly similar to a registered trademark.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the webpage that is published at the disputed domain name hosts pay-per-click links to competitor’s websites.
The Complainant has not licensed or authorized the use of its trademark to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location
When the disputed domain name was registered in 2006, the Complainant’s trademark GOTOASSIST was already a reference in the field of Internet-based technological solutions.
The disputed domain name is being used as a pay-per-click landing page, displaying essentially sponsored links for third party websites that offer competing products.
Therefore, it is not feasible to this Panel that the Respondent could have been unaware of the Complainant’s reputation, business and trademarks.
Furthermore, in doing so, the Respondent:
(i) created a likelihood of confusion with the Complainant’s trademark;
(ii) most likely obtained click-through revenue from this practice; and
(iii) deprived the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promoted products offered by the Complainant’s competitors.
In situations like this, previous UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith use. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <gotoassist.org> be transferred to the Complainant.
Date: January 10, 2012
1 Wikipedia, English version, http://en.wikipedia.org/wiki/Gotoassist, accessed on December 27, 2012, by this Panel.