WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shotgun Software Inc. v. Domain Admin / Hulmiho Ukolen, Poste restante
Case No. D2017-1273
1. The Parties
The Complainant is Shotgun Software Inc. of San Rafael, California, United States of America (“United States”), represented by Donahue Fitzgerald, United States.
The Respondent is Domain Admin of Prague, Czech Republic / Hulmiho Ukolen, Poste restante of Helsinki, Finland.
2. The Domain Name and Registrar
The disputed domain name <shotgunstudios.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2017. On July 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7 and 12, 2017, 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 July 14, 2017, 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 July 19, 2017, and a second amended Complaint on July 20, 2017.
The Center verified that the Complaint together with the amended Complaints 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 July 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2017.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 16, 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 is a company operating since 2006 in the business of selling licensed copies of computer software programs, associated user manuals and related documentation. Since 2014 the Complainant has been owned by Autodesk, Inc.
The Complainant owns or has owned the following trademarks:
SHOTGUN, and design, United States Patent and Trademark Office (“USPTO”), principal register, registered April 6, 2010, registration number 3770243, cancelled November 11, 2016, class 42;
SHOTGUN, international trademark, registered October 31, 2016, registration number 1327736, class 42.
The Complainant has also since 2006 owned the domain names <shotgunsoftware.com> and <shotgunstudio.com>, and variants of the latter dedicated to certain clients.
Nothing of significance is known about the Respondent except for the contact details provided in connection with the registration of the disputed domain name, which has resolved to various different websites alleged by the Complainant to be variously scams, sources of malware, or sources of sponsored links. The disputed domain name appears to have been registered by the Respondent on December 15, 2015.
5. Parties’ Contentions
The Complainant submits that the language of this proceeding should be English since that is believed to be the language of the Registration Agreement. The Complainant requests that, in the event that the language of the Registration Agreement is not English, the Panel, having regard to the circumstances of this proceeding, should exercise its discretion and order that English be used as the language of the proceeding in accordance with paragraph 11(a) of the Rules. The Complainant submits in support, inter alia, that the disputed domain name comprises English words; that the disputed domain name resolves to other websites in English and sponsored links therein in English; that the Respondent has advertised in English that the disputed domain name is for sale; that the disputed domain name is being used for phishing or malware scams perpetrated in English; and that the Complainant would incur significant costs if required to translate the Complaint from English.
The Complainant contends that it has rights in the trademark SHOTGUN as shown in section 4 above and has produced copies of online documentation showing the trademarks to have been registered in its name.
The Complainant contends that, disregarding the generic Top-Level Domain (“gTLD”) designation “.com”, the disputed domain name, by incorporating the Complainant’s trademark, is confusingly similar to the trademark. The additional generic word “studios” in the disputed domain name should not detract from a finding of confusing similarity.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant says it has never authorised the Respondent to use the Complainant’s trademark in any way or to incorporate it in the disputed domain name.
The Complainant says that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods. The disputed domain name resolves to different successive websites after repeated access, named by the Complainant as a “Scam Page”, a “Disable Tracking Page”, “Malware Pages”, and sponsored links. The “Scam Page” is designed to trick the visitor into taking action, through a specified telephone number, to eliminate a virus but is an attempt to phish for confidential information. The “Disable Tracking Page” is designed to trick visitors into supposedly disabling their Internet search history but leads to a phishing attempt. The “Malware Pages” may attempt to download malware on to the visitor’s computer. The sponsored links pages lead to advertisements including those of the Complainant’s competitors. Thus, the Complainant says, the use of the disputed domain name is not in connection with a bona fide provision of goods.
The Complainant says there is no evidence the Respondent has never been commonly known by the disputed domain name.
The Complainant says the usage of the disputed domain name is commercial and there is no evidence it has been used for a fair or noncommercial purpose.
The Complainant further contends that the Respondent’s use of the disputed domain name for the purposes described above constitutes registration and use in bad faith. The Respondent knew or should have known of the Complainant’s trademark before registration of the disputed domain name.
The Complainant says the disputed domain name is intended to attract Internet users by confusion with the Complainant’s trademark. The Respondent’s usages of the disputed domain name through its “Scam Page” and scam telephone number, its “Disable Tracking Page”, and the “Malware Pages” are allegedly fraudulent and are sufficient, in line with previous cases under the Policy, to constitute bad faith registration and use.
The Complainant says the redirection of Internet visitors to sponsored advertising links is a commercial activity dependent upon confusion of the disputed domain name with the Complainant’s trademark and constitutes registration and use in bad faith. The Respondent should be held accountable for such advertisements or links as may be placed on its website by third party providers of such links.
The Complainant says the disputed domain name is advertised for sale for USD 3,000, being considerably in excess of the presumed out of pocket costs of registration, and that a fair inference is that the Respondent has intended to sell the disputed domain name to the Complainant.
The Complainant’s contentions are accompanied by a declaration under penalty of perjury dated July 20, 2017, dealing principally with the content of websites visited in investigations of behalf of the Complainant, by a partner with the law firm acting for the Complainant’s parent company Autodesk, Inc.; and a declaration under penalty of perjury dated July 19, 2017, dealing principally with the Complainant’s background and trademarks, by the vice president of “Production Platform” at Autodesk, Inc.
The Complainant has cited a number of previous decisions under the Policy that it believes should support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Matters
Identity of the Respondent; Notice
In accordance with paragraph 1 of the Rules, the Respondent is “the holder of a domain name registration against which a complaint is initiated”. The registrant of the disputed domain name was shown in the WhoIs document as a privacy service. The Registrar has divulged to the Center the name and address in Helsinki, Finland of the underlying registrant and Respondent, as shown above.
The Domain Name Registration Agreement between the Registrar and the Respondent at paragraph 4 includes the following stipulation: “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in connection with such registration, maintenance, or renewal are complete and accurate, and your contact information will be kept current”.
As observed by the respected panelist in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703: “[the Center] goes to some lengths to ensure that proper service is effected on the named registrant at the place disclosed in the WHOIS database or in the information supplied to the domain name Registrar. Some registrants provide only a post office box number or a convenience address. If the place of service does not happen to be the Respondent’s address as advised to the Registrar, then the Respondent has only him or herself to blame in that circumstance”.
The Panel is satisfied that the Center has fulfilled its obligations to attempt to contact the Respondent and to serve the Complaint in accordance with paragraph 2 of the Rules.
Language of the Proceeding
Having regard to the language of the Registration agreement and the Complainant’s submissions as to the language of this proceeding, uncontested by the Respondent, the Panel determines that the language of the proceeding shall be English.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has held at least one registered trademark for SHOTGUN at all times since April 6, 2010. The disputed domain name is <shotgunstudios.com>, which, disregarding the gTLD “.com”, comprises prominently the entirety of the Complainant’s trademark followed by the generic word “studios”. The Panel does not find the word “studios” to detract from confusing similarity between the disputed domain name and the Complainant’s trademark. Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has stated a prima facie case under paragraph 4(a)(ii) of the Policy to the effect that the Respondent does not have any rights or legitimate interests in the disputed domain name and that the Complainant has not permitted or authorised any use of its trademark by the Respondent.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(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 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”.
The Respondent has not contested the Complainant’s prima facie case and has not asserted any rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. In particular, on the evidence, the use of the disputed domain name cannot be held to be in connection with a bona fide offering of goods or services, for reasons expanded upon below in connection with registration and use in bad faith (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, paragraph 2.13). There is no evidence that the Respondent is or has been generally known by the disputed domain name, or that its use has been fair or noncommercial. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant has the onus of proof under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a Respondent, namely:
“(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 web site 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 provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
The Complainant has produced evidence including screen captures of research on its behalf into the websites to which the disputed domain name has resolved. It is appropriate to use the Complainant’s names for the types of website pages discovered.
On the first occasion of visiting the disputed domain name, it resolved to a website displaying the “Scam Page”, which was dressed up as a warning from Microsoft Corporation that the visitor’s computer had a virus in the nature of a “Trojan Backdoor Hijack” and urged the visitor to call a telephone number provided. The user’s computer beeped and partially locked up until rebooted. A call to the telephone number provided was answered by someone claiming to be a “Microsoft Certified Technician” who attempted to apply phishing techniques (subterfuge) to elicit particulars such as would enable remote control of the user’s computer.
A second visit to the disputed domain name led to a different website, the “Disable Tracking Page”, that displayed a placard stating: “Recommended: Disable Search Tracking. Your browser, search history and habits may be tracked in order to build a profile of you. We highly recommend you click ‘disable’ to prevent companies from tracking you further”, below which was a large button prominently labelled “disable”. The Complainant alleges that clicking on the “disable” button would have caused the user’s computer to download and install adware (which typically controls advertisements or links displayed in response to search terms) or malware (malicious programs including phishing devices).
A third visit to the disputed domain name was automatically redirected to another different Internet address that caused the user’s computer to display a genuine Microsoft warning message that “This website has been reported as unsafe”, with advice not to continue.
Further successive attempts to visit the disputed domain name led to a website blocked and placarded by Google as being a source of dangerous malware; a website purporting to tell the visitor they had won a mobile phone; and a website containing assorted sponsored link headings.
The Panel finds on the evidence that the diverse applications to which the disputed domain name has been put, including attempts to gain confidential information from visitors by subterfuge, to install malicious code on a visitor’s computer, and to divert visitors to sponsored links, have in common, more probably than not, an intention to accrue monetary gain to the benefit of entities including the Respondent. Thus the Respondent’s uses of the disputed domain name have been for commercial gain. Whilst it is the comparison between the disputed domain name and the Complainant’s trademark that established confusing similarity as has been found under paragraph 4(a)(i) of the Policy, it is notable that the word “studios” added to the Complainant’s trademark in the disputed domain name causes it to differ by only the letter “s” from the Complainant’s own domain name <shotgunstudio.com>. The Panel finds on the evidence and on the balance of probabilities that the Respondent has intended to attract Internet users by creating a likelihood of confusion between the disputed domain name and the Complainant’s trademark, for commercial gain, constituting use in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Panel further finds, on balance, that the disputed domain name was registered for the bad faith purpose for which it has been used.
The Panel further finds that the activities to which the disputed domain name has been put, including attempted scamming, phishing and malware distribution, to which at least some visitors could be expected to fall victim, are sufficient to establish registration and use of the disputed domain name in bad faith independently of the provisions of paragraph 4(b) of the Policy, which are without limitation.
A screen capture produced in evidence of the online WhoIs record for the disputed domain name contains a box reading: “ShotgunStudios.com is for sale! The owner of the domain you are researching has it listed for sale at USD 3,000”. The Panel finds that the offering of the disputed domain name for sale for USD 3,000, whether or not it was the Respondent’s primary purpose at the time of registration, amounts to registration and use in bad faith under paragraph 4(b)(i) of the Policy. It is not necessary to show that the open offer for sale has been made directly to the Complainant or to specific business competitors of the Complainant (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279: “The natural meaning of the word “competitor” is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor”).
Accordingly the Panel finds registration and use of the disputed domain name in bad faith under paragraph 4(a)(iii) 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, <shotgunstudios.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: August 23, 2017