WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Offensive Security Limited v. Anonymous protected
Case No. D2016-2437
1. The Parties
The Complainant is Offensive Security Limited of George Town, Cayman Islands, Overseas Territory of the, United Kingdom of Great Britain and Northern Ireland, represented by Riddle Patent Law, LLC, United States of America.
The Respondent is Anonymous protected of Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name <kalilinuxdojo.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 1, 2016. On December 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2016. The Center received an email communication from the Respondent on December 24, 2016.
On January 10, 2017 and January 27, 2017, the Center received a supplemental filing from the Complainant and the Respondent respectively, neither of which the Panel considers, and neither of which would alter the outcome of this case.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on January 17, 2017. 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 has provided evidence that it is the owner of the following trademarks:
- KALI, US trademark registration No. 4,491,611, filing date December 7, 2011 and registration date March 4, 2014.
- KALI, US trademark registration No. 4,411,625, filing date December 7, 2011 and registration date October 1, 2013.
The disputed domain name <kalilinuxdojo.com> was registered on August 3, 2016.
5. Parties' Contentions
The Complainant is widely known globally as being at the forefront of network information security and provides education, training, and certification programs to both governmental and private entities in the field of information security, penetration testing, digital forensics, reverse engineering and malware analysis. The Complainant provides several free open source "community projects" that are aimed at supporting, educating, and maintaining a robust information security community.
KALI and KALI LINUX are trademarks used by the Complainant to identify an educational system for learning and practicing penetration testing. The KALI educational system is a combination of a software operating system and various informational services (extensive libraries of tutorials and instructional materials) directed to training information security professionals in the art of penetration testing. The Complainant uses the domain name "www.kali.org" as the main page for the KALI project.
In 2014, the Complainant began providing educational materials and training workshops under the composite mark KALI LINUX DOJO. The KALI LINUX DOJO is an all-day training event that provides and in-depth and hands-on examination of the KALI LINUS penetration testing platform. The Complainant is well-known in the industry as KALI LINUX relating to education and training services. KALI LINUX (@kalilinux) is the Complainant's official Twitter handle since 2009 which has 111,000 followers.
The disputed domain name contains the Complainant's registered trademark KALI in its entirety. The disputed domain name is identical to the composite mark KALI LINUX DOJO which is adopted and used by the Complainant. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not granted any permission to use the trademark and there is no connection between the parties.
The Complainant's trademark is used by the Respondent to generate advertising revenue from misdirected web traffic resulting from confused users who are seeking services of the Complainant. The content is not fair use content that discusses or criticizes the Complainant's workshop provided under the KALI LINUX DOJO mark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
The Respondent is hiding its true identity by listing itself as "Anonymous protected". The Respondent is impersonating the Complainant, posting material as "Kali Linux" on the website to which the disputed domain name resolves.
Although the Respondent has doubts regarding the Complainant's rights in the disputed domain name, in its email communication of December 24, 2016, the Respondent indicates that it does not wish "to extend the matter and [is] ready to transfer or cancel the [disputed domain name]". The Respondent also indicates that it has "spent some of [its] money and lots of [its] time on this website to get the organic traffic from google and google adsence is the small source of revenue for [it]" and asks "if possible please try to reimburse the same".
6. Discussion and Findings
In regards to the Parties' unsolicited supplemental filings, the Panel refers to the consensus view in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 4.2 which states: "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." Considering that no exceptional circumstances have been brought forward or submitted by the Parties, the Panel does not consider that the supplemental filings are justified and consequently declines to accept it.
As previously described, the Complainant has requested transfer of the disputed domain name and the Respondent has stated in its Response that it has no objection to the transfer of the disputed domain name to the Complainant. The Panel refers to WIPO Overview 2.0 paragraph 4.13 states: "Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone".
A number of decisions have followed this approach. See for example The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 in which the panel stated: "A genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams‑Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207)".
Also, see John Bowers QC v. Tom Keogan, WIPO Case No. D2008-1720 in which the panel stated: "There may be circumstances where it is appropriate to proceed to a consideration of the merits of the Complaint, for example where it is desirable to make a public finding of bad faith against a serial cybersquatter who has repeatedly sought to avoid such a finding by timely concession (see Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211 and Messe Frankfurt GmbH v. Texas International Property Associates, WIPO Case No. D2008-0375). It is clear that the panel has a discretion to consider the merits where appropriate, even if the respondent has consented to the relief sought by the complainant."
Considering the circumstances in the present case, the Panel finds that the Respondent's genuine unilateral consent to transfer the disputed domain name <kalilinuxdojo.com> to the Complainant provides a sufficient basis to order a transfer without consideration of the paragraph 4(a) elements.
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 <kalilinuxdojo.com> be transferred to the Complainant.
Date: January 25, 2017