WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Attachmate Corporation v. Domain Administrator / Development Services, MindViews LLC

Case No. D2013-1622

1. The Parties

The Complainant is Attachmate Corporation of Seattle, Washington, United States of America (“USA”), represented by Stokes Lawrence, P.S., USA.

The Respondent is Domain Administrator of Wellington, New Zealand / Development Services, MindViews LLC of Glenside, New Zealand.

2. The Domain Name and Registrar

The disputed domain name <filexpress.com> is registered with Netracorp, LLC dba Global Internet (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2013. On September 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2013, 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 September 24, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not wish to amend its Complaint in this matter.

The Center verified that 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 September 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2013. The Response was filed with the Center on October 16, 2013. On October 23, 2013, the Center received a Supplemental Filing from the Complainant. The Center acknowledged receipt of the Supplemental Filing on October 24, 2013. On October 28, 2013, the Center received a Supplemental Filing from the Respondent. The Center acknowledged receipt of the Supplemental Filing on October 29, 2013.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 25, 2013. 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

The Complainant is a corporation headquartered in Seattle, Washington, USA. The Complainant is a global provider of software systems. The Complainant and its affiliates serve over 65,000 customers in more than 100 countries. There are more than 16 million users of the Complainant’s services. The Complainant is the owner of USA Trademark registration number 1511624 for the word mark FILEXPRESS in international class 9, registered on November 8, 1988. The Complainant states that it and its predecessor in interest have used the FILEXPRESS trademark in commerce since at least May 1986.

The Respondent is an entity based in Wellington, New Zealand. The Respondent provides information and consultation services relating to Internet infrastructure and architecture. The disputed domain name was registered on September 15, 2000. The website associated with the disputed domain name is entitled “File Xpress – Free to Send Files / How to Send Large Files”. The said website contains hyperlinks pointing to the website at the domain name <virtualdrive.com> which offers cloud storage services and file transfer protocol services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant states that together with its predecessor in interest it has continuously used its FILEXPRESS trademark in commerce for 27 years. The Complainant submits that it has expended considerable effort and expense in promoting and protecting its FILEXPRESS mark and that the public has come to recognize the mark as identifying the Complainant’s software goods.

The Complainant contends that the disputed domain name is identical to its FILEXPRESS mark, noting that the disputed domain name incorporates the trademark in its entirety and that the “.com” suffix does not materially change the commercial impression of the disputed domain name and does nothing to dispel a connection with the said mark.

The Complainant asserts that the Respondent registered the disputed domain name some 14 years after the registration of its FILEXPRESS trademark, by which time the Complainant had gained recognition as a well-known provider of computer software and related services.

The Complainant contends that the Respondent does not own any registered or common law trademarks containing the term FILEXPRESS and has never been known by or operated a business under the FILEXPRESS name. The Complainant submits that the Respondent has no relationship to it and is not authorized to use its FILEXPRESS mark. Additionally, the Complainant notes that the Respondent is not affiliated with the Complainant and has not been granted any license to use the Complainant’s FILEXPRESS mark. The Complainant asserts that it is extremely unlikely that the Respondent was unaware of the Complainant’s business or its mark when the Respondent registered the disputed domain name.

The Complainant describes the website associated with the disputed domain name and avers that this does not constitute a bona fide offering of goods or services in terms of paragraph 4(c)(i) of the Policy. The Complainant states that the said website contains generic information on the subject of cloud computing and that within the website’s text are hyperlinked words and phrases, such as “share large files”, “send large files” and “backup software”. The Complainant notes that these hyperlinks resolve to the homepage of a company called Virtual Drive located at <virtualdrive.com>, which displays links to “Mobile Client Apps”, “FREE Client Software” and “FTP Server”.

The Complainant avers that the disputed domain name operates as a “naked pass-through” offering no real and substantial offering of goods and services and instead hyperlinks to a website which offers goods and services that overlap with those offered by the Complainant. The Complainant submits that the Respondent registered the disputed domain name to create a misleading impression that it was associated with the Complainant with a view to exploiting the recognition and reputation of the Complainant’s trademark.

The Complainant states that the Respondent has used a privacy service on the WhoIs for the disputed domain name to avoid detection in order to allow it to continue what the Complainant alleges are infringing and deceitful activities.

The Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s FILEXPRESS trademark. The Complainant submits that the Respondent registered the disputed domain name with the intention of disrupting the Complainant’s business and that the Respondent has thereby prevented the Complainant from reflecting its FILEXPRESS mark in the domain name space.

The Complainant avers that it is implausible that the Respondent was unaware of the Complainant’s trademark especially when the Respondent offers goods and services that are similar to those offered by the Complainant.

The Complainant notes that it sent cease and desist notices via a variety of means to the Respondent in July 2013, to which it did not receive a reply. The Complainant suggests that this failure to respond is a further indicia of bad faith.

The Complainant contends that the Respondent’s use of a privacy service on the WhoIs of the disputed domain name was designed to frustrate the purpose of the Policy and to make it difficult for the Complainant to protect its trademarks.

The Complainant asserts that the Respondent has adopted a domain name that is confusingly similar to the Complainant’s registered trademark to divert Internet users to a website which is not a bona fide offering of goods and services, per paragraph 4(c)(i) of the Policy and that this is not a legitimate or fair use pursuant to paragraph 4(c)(iii) of the Policy.

B. Respondent

The Respondent contends that it registered the disputed domain name over 13 years ago to provide a resource for people looking for hosted services. The Respondent submits that for the past 11 years it has used the associated website to provide information and consultation services in relation to Internet infrastructure and architecture. The Respondent notes that it also provides hosting and domain name registration services.

The Respondent contends that the term “File Express” is in widespread use as a generic description to describe the process of quickly transferring files on the Internet. The Respondent avers that the disputed domain name has been used to provide a free public resource of commentary and editorial information about online cloud services.

The Respondent asserts that the Complainant’s trademark lacks distinctiveness and that the disputed domain name is made up of two generic words, one of which (“xpress”) is a typographical variant of the ordinary spelling of “express”. The Respondent states that “file” means a “collection of information” and “express” a “method of sending fast and safe”.

The Respondent contends that because of the alleged generic nature of the Complainant’s trademark, it is “extremely suspect” and subject to cancellation in the USA. The Respondent asserts that even if the Complainant’s trademark is valid, it relates to a generic, widely used term, noting that the results of a search on Google for the term “file xpress” yields 9.55 million separate web pages. The Respondent notes that the Complainant uses the term “File Express”, with the additional letter “e” in its online advertising on Google. This, the Respondent contends, shows that the Complainant’s trademark is diluted and not strong enough to stand alone.

The Respondent states that it was not aware of the Complainant when it registered the disputed domain name. The Respondent exhibits search results from Google which have been restricted to results dated from January 1, 1989 to September 15, 2000, which it says show that there was little public information available at that time regarding the term “filexpress”. The Respondent submits that this demonstrates that the Complainant’s mark was not well known in New Zealand or the USA at that time.

The Respondent asserts that it has used the disputed domain name to provide noncommercial resources to the public with no intent for commercial gain or to mislead or divert consumers. The Respondent avers that there are no affiliate links, endorsements or advertising on the website associated with the disputed domain name.

The Respondent states that it employed a privacy service on the WhoIs for the disputed domain name in order to reduce unsolicited email and postal mail. The Respondent observes that it has since removed the privacy service from the WhoIs.

The Respondent avers that as the Complainant has delayed in bringing the Complaint in the 13 years since the disputed domain name was created this raises the inference that the Complainant does not believe the Respondent was engaged in bad faith.

The Respondent contends that the disputed domain name was not registered or acquired for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant.

Finally, the Respondent requests a finding of reverse domain name hijacking against the Complainant, contending that the Complainant had full knowledge of the Respondent’s unassailable legitimate interest in the disputed domain name and clear lack of bad faith in its registration and use. The Respondent submits that the Complainant's delay in bringing the Complaint raises the inference that the Complainant did not truly believe that the Respondent was engaged in bad faith.

C. Complainant’s supplemental filing

The Complainant’s supplemental filing largely repeats the Complainant’s original contentions. The Complainant also asserts that as the Response was received after the Center’s deadline it should not be considered by the Panel. The Complainant further contends that, after the filing of the Complaint, the Respondent began using a Robot Exclusion Standard to prevent the website associated with the disputed domain name from being indexed by the website at “www.archive.org”. The Complainant submits that this is indicative of bad faith.

D. Respondent’s supplemental filing

With regard to the late filing of the Response, the Respondent submits that this was the result of certain unspecified technical difficulties. The remainder of the submission largely repeats the contentions made in the formal Response.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(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. Preliminary issue: Parties’ Supplemental Filings

Paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides the following consensus view on the topic of Supplemental Filings:

“[…] Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order”.

The Panel respectfully adopts the consensus view. Having reviewed the Complainant’s supplemental filing, the Panel is content to admit this only insofar as it relates to the late filing of the Response, which is a matter that could not have been anticipated in the original Complaint and thus in the Panel’s view constitutes “exceptional circumstances” in line with the consensus view. Likewise, for the same reason, the Panel will admit the Respondent’s supplemental filing only insofar as it responds to that of the Complainant relative to the late filing of the Response.

B. Preliminary issue: Late filing of Response

In its supplemental filing, the Complainant asserts that as the Response was received after the Center’s formal deadline it should not be considered. The Panel has reviewed the email correspondence between the Respondent and the Center and notes that the Response was received at 01:24 Geneva time on October 16, 2013. Therefore, the Response arrived a little under one and a half hours after the deadline of midnight October 15, 2013.

The UDRP is designed to be a simple, straightforward administrative procedure to allow for the swift and inexpensive resolution of domain name disputes. While lengthy delays would clearly be unacceptable, the Panel takes the view that a delay of a few hours is of no particular significance and would not have prejudiced the Complainant. The Panel also considers that rejecting the Response in its entirety because of such a short delay would not be consistent with the provisions of paragraph 10(b) of the Rules which states inter alia that the Panel shall ensure that each Party is given a fair opportunity to present its case.

The Panel will therefore accept the late Response as if it had been received within the formal deadline.

C. Identical or Confusingly Similar

The Panel notes that the generally accepted view of UDRP panels is that the test in paragraph 4(a)(i) of the Policy is “a relatively low threshold test for a complainant, the object of which is to establish that there is a bona fide basis for the complaint” (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743).

The Respondent’s case on this element of the Policy seeks to challenge the validity of the trademark relied upon by the Complainant on the basis that this is generic in nature and “extremely suspect and subject to cancellation in the United States”.

Paragraph 1.1 of the WIPO Overview 2.0 provides inter alia that if the Complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The WIPO Overview 2.0 goes on to note that in certain, highly limited circumstances, some UDRP panels have opted to examine the circumstances of trademark registration in considering whether it satisfies UDRP requirements. The circumstances concerned include where the registration is automatic or unexamined or listed solely on a supplemental register. No such circumstances have been raised by the Respondent in the present case.

As noted in the factual background, the Complainant has cited a USA registered trademark which is listed on the Principal Register of the United States Patent and Trademark Office. There is no indication from the record that the Complainant's mark has been revoked or that there is any other legal action concerning the mark currently taking place. The Panel therefore concludes that the Complainant’s mark is sufficient for the purposes of paragraph 4(a)(i) of the Policy and that the Complainant has a bona fide basis for the Complaint.

The Panel is satisfied that the Complainant’s FILEXPRESS registered trademark is identical to the disputed domain name given that the generic top level domain “.com” is typically disregarded in cases under the Policy on the grounds that this is required for technical reasons only and is wholly generic. In these circumstances, the Panel finds that the Complainant has established the first element under the Policy.

D. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial 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”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name (see paragraph 2.1 of WIPO Overview 2.0).

In the present case, the Complainant submits that the Respondent does not own any registered or common law trademarks containing the term “filexpress”, that the Respondent has never been known by or operated a business under the FILEXPRESS name, that the Respondent has no relationship to the Complainant and that the Respondent has not been authorized to use the Complainant’s FILEXPRESS mark. The Complainant also notes that the Respondent is not affiliated with the Complainant and has not been granted any license to use the Complainant’s FILEXPRESS mark. The Panel is satisfied that these submissions constitute a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the burden of production shifts to the Respondent to bring forward evidence of such rights or legitimate interests.

The Respondent points to the website associated with the disputed domain name which displays eight articles concerning cloud computing, sending large files across the Internet and similar services. These articles contain a number of text hyperlinks for terms such as “share large files” and “backup software” which direct users to a website at “www.virtualdrive.com”. The website at “www.virtualdrive.com” offers a variety of commercial “Secure Cloud Storage Services” together with file transfer services competitive to those of the Complainant. The Panel observes at the end of each article users are invited to click through to a further website at “www.fileserver.org” which displays articles which are, again, related to cloud computing and similar topics.

The Complainant’s position is that the Respondent’s website is merely a “naked pass through offering no real and substantial offering of goods and services” while the Respondent avers that it has used the website for the past 11 years to provide “non-commercial resources to the public with no intent for commercial gain or to mislead or divert consumers”. In these circumstances, the Respondent’s case is effectively a submission in terms of paragraph 4(c)(iii) of the Policy, namely that it claims to make a legitimate noncommercial use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The question before the Panel is therefore whether the use to which the Respondent has put the website associated with the disputed domain name constitutes a use that is both legitimate and noncommercial. The Panel notes the Respondent’s claim that it has used the website for 11 years to publish commentary and editorial information related to cloud computing as a resource for people looking for hosted services. The Panel observes that while some commentary is provided on the website, the articles concerned feature a variety of text links comprised of keywords relevant to cloud computing and which direct visitors to a commercial website offering goods and services in competition with those of the Complainant. The Panel therefore takes the view that the Respondent’s website has an underlying commercial purpose of search engine optimization with the ultimate aim of redirecting users to the said commercial website. This does not strike the Panel as a genuine noncommercial resource of the type contended for by the Respondent and the Panel considers that the Complainant’s submission that it is merely a “pass through” website is to be preferred.

While the Respondent claims to have used the generic words “file” and “(e)xpress” together in the disputed domain name for its alleged noncommercial purposes it is an inescapable fact that the Respondent is using the non-dictionary typographical variant “xpress” which when inserted directly after the word “file” constitutes the Complainant’s distinctive trademark. Had the disputed domain name contained the phrase “File Express” this might have cast the Respondent’s case in a different light, however as matters stand, the inevitable conclusion for the Panel is that the disputed domain name does not represent the adoption of a generic term or phrase as the Respondent contends but rather the selection of a term based upon trademark value for the purpose of commercial gain. In the Panel’s opinion such selection cannot be considered to confer any rights or legitimate interests upon the Respondent.

In the Panel’s view, the Respondent’s case is not furthered by its submission that the Complainant uses the keywords “File Express” in its Google advertising. In the Panel’s mind this shows nothing more than that the Complainant evidently wishes to capture the attention of Internet users who may be employing a generic phrase or indeed who may even have heard of the Complainant’s product by word of mouth and do not know the correct spelling of the corresponding trademark. The Panel considers in any event that the Complainant’s use of a more conventional spelling in its keyword advertising does not confer any entitlement upon the Respondent to adopt the Complainant’s trademark within the disputed domain name, as opposed to any generic phrase.

In all of the above circumstances, the Respondent’s argument that it is engaging in a legitimate noncommercial use of the disputed domain name falls to be rejected. Accordingly, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the second element under the Policy has been established.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.

The Complainant's submissions predominately focus on paragraphs 4(b)(iii) and (iv) of the Policy. The Complainant contends that the Respondent has either attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s FILEXPRESS trademark and/or has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor in the software industry. The Complainant relies both upon the identity between the Complainant’s trademark and the disputed domain name, and upon the use to which the associated website has been put. As noted above, that use was to display hyperlinks which lead to a commercial website that features goods and services competitive to those offered by the Complainant.

On balance, the Panel accepts the above contentions. The Panel is not convinced that the website associated with the disputed domain name is an example of a genuine information portal, provided as a free noncommercial source of information to interested members of the public as suggested by the Respondent. The presence of commercially-focused hyperlinks which are made up of keywords directly related to cloud services, which lead to a single commercial website, leaves the Panel with a strong impression that the website connected to the disputed domain name was indeed created as a “naked pass-through” as contended by the Complainant.

The Respondent denies knowledge of the Complainant or its trademark at the date of creation of the disputed domain name. It is worthy of note however that the Complainant’s trademark pre-dates the disputed domain name by some 14 years and contains to the Panel’s eyes a distinctive combination of the word “file”, and the word “xpress” missing the leading letter “e”. The Panel considers that it is simply too much of a coincidence to believe that the Respondent came upon the term “filexpress” in its non-dictionary typographical variant form entirely independently of the Complainant, particularly when it subsequently used the disputed domain name in the manner described above.

In summary, it appears to the Panel that the Respondent selected an exact match of the Complainant’s mark and used it for a commercial purpose relating to the Complainant’s industry. This suggests opportunistic bad faith as the Complainant contends. For its part, the Respondent has been unable to explain its actions to the Panel’s satisfaction. While the Respondent has produced a date restricted search from Google for the period surrounding the creation of the disputed domain name, such a search is clearly not conclusive of the Respondent’s knowledge and does not displace the reasonable inference that the Respondent selected the disputed domain name because it contained an exact representation of the Complainant’s trademark. Equally, the Respondent’s list of some 70 “.com” domain names containing the words “file” and “express” when subjected to scrutiny only gives rise to some 6 domain names using the variant “xpress” and none of these appear to be either a direct or even a near representation of the Complainant’s trademark, in contrast to the disputed domain name. Furthermore, the Panel considers that that the timing of the Respondent’s adoption of a “robots.txt” file, after the filing of the Complaint, is curious to say the least and in the absence of an adequate explanation is itself an indicia of bad faith intent, albeit not dispositive of the issue on its own (see paragraph 3.10 of the WIPO Overview 2.0).

The Respondent asserts that the Complainant’s delay in bringing the Complaint in the 13 years since the creation of the disputed domain name raises the inference that the Complainant does not truly believe the Respondent was engaged in bad faith or at least that the disputed domain name was not causing any harm to the Complainant. The Panel notes that a defense of delay does not generally apply under the Policy and that delay does not of itself prevent a complainant from succeeding in its complaint, provided that the complainant is able to establish a case on the merits under the requisite three elements (see paragraph 4.10 of the WIPO Overview 2.0). The Panel is of the opinion that while a lengthy period between the creation of a domain name and the commencement of proceedings may in general make it more difficult for a complainant to establish registration and use in bad faith, this is of no consequence in the current case. There is nothing in the record to suggest that the passage of time has had any material effect on the indistinguishable nature of the disputed domain name from the Complainant's mark or the use to which the disputed domain name has been put.

In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and accordingly that the third element under the Policy has been established.

F. Reverse Domain Name Hijacking

Given the Panel’s finding that the Complainant succeeds on all three elements of the Policy, the Panel rejects the Respondent’s request for a finding of Reverse Domain Name Hijacking.

7. Decision

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 <filexpress.com> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: November 8, 2013