The Complainant is Kaspersky Lab Zao, Moscow, Russian Federation, represented by UDRPro, LLC, United States of America.
The Respondent is Jan Zeleznak, Co. Wexford, Ireland.
The disputed domain name <kaspersky.ie> is registered with .IE Domain Registry Limited (“IEDR”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2010.
On February 5, 2010, the Center transmitted by email to .IE Domain Registry Limited a request for registrar verification in connection with the disputed domain name.
On February 11, 2010, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 19, 2010. In accordance with the Rules, paragraph 5.1, the due date for Response was March 22, 2010.
On February 19, 2010 the Respondent sent an informal Response by email to the Center.
On March 25, 2010 the Complainant submitted supplemental filings.
On March 31, 2010, the Center appointed James Bridgeman as the sole panelist in this matter.
The Panel finds that it was properly constituted. In compliance with the Rules, the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center.
The Complainant is a developer and supplier of anti-virus and anti-spam software and IT security solutions for protecting personal computers business and enterprise networks.
The Complainant is the owner of the domain names <kaspersky.com>, <kaspersky.co.uk>, <kaspersky.ru> and <kaspersky.eu> which resolve to websites established by the Complainant to market its products.
The Complainant is the registered owner the following trademark registrations:
Community Trademark Registration Number 001605955 for KASPERSKY, registered April 26, 2002 in classes 9, 16, and 42.
United States Trademark Registration Number 2818639 for KASPERSKY, registered March 2, 2004 in classes 9, 16 and 42.
There is little information available about the Respondent except that he claims to be re-seller of software that competes with the Complainant's products.
The Complainant requests this Panel to issue a decision that the disputed domain name <kaspersky.ie> be transferred to the Complainant.
The Complainant submits that the domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights.
The Complainant is a developer of anti-virus and anti-spam software for personal computers, as well as a provider of IT security solutions for protecting business and enterprise networks. The Complainant is well known worldwide for its products, and the company has offices in over twenty countries with a significant presence in Europe.
The Complainant submits that over the years, the Complainant has expended large sums of money advertising and promoting its goods, services and trademarks. The Complainant submits that it has developed a worldwide network of distributors in over 100 countries to market and sell its products. As a result of all of these activities, the Complainant has developed considerable goodwill in its business and in its trademarks.
The Complainant's office responsible for its sales and marketing operations in Ireland is located in Oxfordshire, United Kingdom of Great Britain and Northern Ireland. The Complainant has been operating from that office since 2002. The Complainant currently sells its products in Ireland through two re-sellers based in Ireland.
The Complainant submits that it maintains an extensive Internet presence to market its various products using its abovementioned domain names <kaspersky.com>, <kaspersky.co.uk>, <kaspersky.ru> and <kaspersky.eu> as addresses for its websites. The Complainant submits that the Internet is one of the primary marketing channels used by the Complainant.
The Complainant furthermore relies on its abovementioned registered trademarks for the KASPERSKY mark and in particular the Complainant relies on its Community Trade Mark Reg. nº 001605955 which it submits is protected in both jurisdictions on the island of Ireland and therefore constitutes a “Protected Identifier” for the purposes of this Complaint. See Fatboy the original B.V. v. Padraig Beirne, WIPO Case No. DIE2008-0003.
The Complainant complains that the disputed domain name <kaspersky.ie> misleadingly resolves to a website at “www.dexhouse.com”, which is a website for a company called Dexhouse, a reseller of anti-virus and IT security products for ESET, LLC (“ESET”). The Complainant submits that ESET is one of the Complainant's main competitors. The ESET reseller offers on its website the ESET “Smart Security” and “NOD32 Antivirus” products.
The Complainant refers to a screenshot of the webpage to which the disputed domain name <kaspersky.ie> resolved as of January 23, 2010 which has been provided to this Panel as an annex to the Complaint. The products listed on the ESET reseller website are also marketed on ESET's website at “www.eset.com”. A screenshot of ESET's website as of January 23, 2010 has also been provided as an annex to the Complaint.
The Complainant submits that the Respondent is an employee of ESET in Ireland, and the Respondent is involved with website administration duties for ESET. The Complainant submits that it carried out an Internet search for the Respondent on the Internet on January 23, 2009. The search returned the “LinkedIn.com” profile page of Jan Zeleznak on which the Complainant submits that the Respondent was listed as the “IT Services Manager at ESET Ireland”. The “LinkedIn.com” profile states that Respondent has held this role since April 2007. The Complainant has submitted a screenshot of the LinkedIn.com profile as of January 23, 2010 as an annex to the Complaint.
The Complainant also refers to a personal website at “www.janzeleznak.com” which the Complainant submits is hosted by the Respondent. The “About Me” page on the website states that the Respondent is currently “living in Ireland” and is “working as IT Manager for IT Software Security Company. Mainly as Customer care, Web administrator, designer and developer.” A screenshot of the website has been provided as an annex to the Complaint.
The Complainant submits that as a consequence of the Respondent's actions, Internet consumers intending to reach the Complainant's website are inadvertently re-directed to a competitor's re-seller website, and are therefore likely to be confused as to the origin of the goods and services appearing at the competitor's re-seller website. See Fatboy the original B.V. v. Padraig Beirne, WIPO Case No. DIE2008-0003 (Finding that “[u]sing the trademark without the owner's permission to generate income for these similar goods can and will result in confusion to the public about the origin of this website, and the origin of the competing products. This includes the likelihood of confusion between the website at the disputed domain name and the official website of the Complainant.”).
The Complainant argues that it follows that the Respondent's use of the disputed domain name <kaspersky.ie> has caused and continues to cause confusion, mistake among the public and has deceived the public on numerous occasions as to the source of products advertised on the website to which the domain name resolves. The Complainant also submits that the Respondent's use of the domain name continues to confuse, deceive and mislead Internet users as to the affiliation, connection, or association of the ESET reseller's business with that of the Complainant. Moreover, the Complainant submits that the Respondent's use of the disputed <kaspersky.ie> domain name has caused and will continue to cause dilution of the distinctive quality of the Complainant's trademarks.
The Complainant submits that the Respondent has no rights in law or legitimate interests in respect of the disputed domain name. The Complainant submits that the disputed domain name <kaspersky.ie> automatically redirects Internet consumers to a competitor's reseller website, where competing anti-virus and IT security products are offered for sale. Using a domain name that contains another's mark to offer products or services that compete with those of the mark holder is not sufficient to establish rights or legitimate interests in a disputed domain name. See Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946 (Finding that the respondent's registration and use of a domain name that is confusingly similar to the complainant's mark to sell directly competing products does not constitute use of the domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Uniform Domain Name Dispute Resolution Policy (“UDRP Policy”).
The Complainant submits that the IEDR WhoIs record does not indicate the date on which the Respondent registered <kaspersky.ie>. The Complainant submits that a search of the Internet Archive at “www.archive.org” of <kaspersky.ie> indicates however that the domain name was previously owned by Chameleon Technology, an authorized reseller of the Complainant's products based in Ireland, as late as February 6, 2005. A screenshot of <kaspersky.ie> as of February 6, 2005 from the Internet Archive has been submitted as an annex to the Complaint.
The Complainant submits that it follows that the earliest date that the Respondent could have acquired the disputed <kaspersky.ie> domain name was in the year 2005, three years after the Complainant acquired its registration of the Community Trademark KASPERSKY, and long after the Complainant had introduced its brand of anti-virus and IT security products into Ireland.
Furthermore, the Complainant submits that the Respondent is not commonly known as “Kaspersky”; that the Respondent has never operated a business under “Kaspersky”; and that the Respondent does not have a registration for any trademark referring to or related to the KASPERSKY trademark. The Complainant submits that according to IEDR's WhoIs record, the Respondent is known as “Jan Zeleznak”. Thus, the domain name <kaspersky.ie> does not correspond to a personal name or pseudonym of the Respondent.
The Complainant submits that consequently, the Respondent is unable to argue any rights or legitimate interests in <kaspersky.ie>, including any arguments for legitimate non-commercial or fair use of the domain name, without intent for commercial gain. The Complainant submits that to the contrary, the Respondent is knowingly, intentionally, and in bad faith relying on the <kasaperky.ie> domain name to trade upon the Complainant's well known mark and reputation as a global provider or anti-virus and IT security products.
The Complainant furthermore submits that the disputed domain name was registered or is subsequently being used in bad faith. In this regard the Complainant submits that the Respondent is using the domain name <kaspersky.ie> to resolve to a commercial website that offers anti-virus and IT security products in competition with Complainant. The Complainant submits that it can be reasonably inferred that the Respondent registered <kaspersky.ie> to interfere with and disrupt Complainant's business. See GB Investments, Inc. v. Donald Baker, WIPO Case No. D2007-1320 (Finding that “[i]n engaging in this commercial activity, Respondent did (if only indirectly) become a competitor of Complainant and attracted Internet users for commercial gain, and in so doing it must have been apparent to the Respondent that this would have a disruptive effect on the business of the Complainant.”).
The Complainant further submits that Internet users who view the website to which <kaspersky.ie> resolves to may assume that the Complainant endorses or is otherwise affiliated with the ESET reseller website since the resolving website offers similar anti-virus and IT security products. The Complainant argues that the Respondent is clearly seeking to profit from this confusion, which constitutes bad faith registration. See Busy Body, Inc. v. Fitness Outlet, Inc., WIPO Case No. D2000-0127 (Finding that bad faith because the respondent and the complainant are in the same line of business and the respondent is using a domain name confusingly similar to complainant's FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name.).
The Complainant submits that such actions by the Respondent, at best, constitute bad faith. As evidenced by the similarity in products offered for sale on the website to which the <kaspersky.ie> domain name resolves, the Respondent intentionally selected and registered the <kaspersky.ie> domain name primarily for the purpose of disrupting the Complainant's business and deriving sales revenue from the goodwill built up in the Complainant's mark.
In an informal response by email the Respondent submits that “the issues as stated in the Complaint are incorrect”. The Respondent states that he had no intention of misusing good name of Kaspersky products or any other relations with the Complainant.
The Respondent states that his aim was to create a security website offering multiple security product solutions, and to provide general information to the public regarding Malware and IT Security.
The Respondent refers to a screenshot from the website to which the disputed domain name resolved and submitted that he had even placed link to the trial version of the Complainant's product so that clients could determine for themselves which product they would like to use.
The Respondent accepts that ESET products were offered on the site, but explained that these offerings were due to his “status as a reseller for ESET in Ireland”.
The Respondent asserts that he aspired to attaining reseller status for the Complainant's products also and that therefore he had purchased the domain which was free at the time. The Respondent explained that his time schedule did not however allow him to proceed with this plan as yet, but that he remained willing to do so.
The Respondent submits that he purchased the domain name, planning to become a legitimate reseller for the Complainant in Ireland and has redirected the <kaspersky.ie> domain name to resolve to the Complainant's website at the <kaspersky.co.uk> address. The Respondent expressed the hope that he might enter into discussions with the Complainant with the view to discussing becoming an authorised re-seller of the Complainant's products.
In a reply to the Respondent's informal Response, the Complainant denies that the Respondents “aim was to create [a] security website offering multiple security product solutions, and to provide general information to the public regarding Malware and IT Security”. The Complainant submits that as of the filing date of the Response, Respondent's website that resolved <kaspersky.ie> only advertised, offered for sale, and promoted software for ESET, one of Complainant's main competitors in Europe.
The Complainant submits that the Respondent updated his website to include a link to the Complainant's Kaspersky products only after receiving the Complaint. As of the filing date of the Complaint, there were no links to the Complainant's company, nor did it mention the Complainant anywhere on the website.
Furthermore, in his Response, the Respondent acknowledges that he is a re-seller for ESET in Ireland. The Respondent also states that he had “intentions to gain re-seller status for Kaspersky as well”. However, the Respondent has never contacted the Complainant or inquired about becoming a reseller in Ireland prior to the Complaint filing date.
On February 24, 2010, the Respondent emailed Complainant's attorney asking “What would you offer to purchase this domain from me”. Respondent's desire to sell the domain name to Complainant is indicative of bad faith. See CBS Broadcasting Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243 (Finding that “an offer to sell the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively establishes that the domain name has been registered and is being used in bad faith.”).
Paragraph 1 of the IEDR Policy places on the Complainant the obligation to prove that:
1.1.1 a domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights; and
1.1.2 the Registrant has no rights in law or legitimate interests in respect of a domain name; and
1.1.3 a domain name has been registered or is being used in bad faith.
The disputed domain name is identical to the Complainant's KASKPERSKY trademark. The Complainant has established rights inter alia in Community Trademark Registration Number 001605955 for KASPERSKY, registered April 26, 2002 in classes 9, 16, and 42.
Paragraph 1.3.1 of the IEDR Policy provides that “Protected Identifiers for the purpose of the Policy include trade and service marks protected in the island of Ireland”. As a Community Trademark is protected in both jurisdictions on the island of Ireland, it follows that the Complainant has succeeded in the first element of the test in Paragraph 1 of the IEDR Policy.
In the view of this Panel, when considering the onus of proof in the second element of the test in paragraph 1 of the IEDR Policy it is appropriate to apply the reasoning adopted by panels interpreting and applying the second element of the test in paragraph 4 of the UDRP Policy, i.e. once the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the domain name the onus shifts to the Respondent to establish his rights.
In the present case, it is clear that the Complainant has significant rights in the KASPERSKY trademark in respect of computer software security products in Ireland. The Respondent was aware of the Complainant's rights in the KASPERSKY mark and its reputation in the marketplace when he acquired the domain name. The Respondent makes no claim to any connection with the Complainant or the word “Kaspersky” except that he has stated that his interest in the domain name is to use it as the address of a website to re-sell computer software and he hoped to be appointed as an authorized re-seller of the Complainant's goods. The Complainant has pointed out that the Respondent has never applied to become a re-seller of the Complainant's goods.
The Complainant has not given the Respondent any right to use its trademark or the domain name or to act as a reseller of its products. Furthermore the Complainant's allegations that the Respondent is not commonly known as “Kaspersky”; that the Respondent has never operated a business under “Kaspersky”; and that the Respondent does not have a registration for any trademark referring to or related to the KASPERSKY trademark have not been denied by the Respondent.
Therefore while the Complainant has established a prima facie case that the Respondent has no rights in law or legitimate interest in the domain name, there is no evidence that the Respondent has any such rights in law or legitimate interest.
It follows that the Respondent has failed to establish any rights or legitimate interest in the domain name and the Complainant is entitled to succeed in the second element of the test in Paragraph 1 of the IEDR Policy.
On the evidence the Panel finds that the Respondent was aware of the Complainant's reputation and goodwill in the KASPERSKY mark when he acquired the domain name and in fact he acquired the domain name because it was identical to the Complainant's trademark.
The history of the disputed domain name is unclear. It would appear that it was first registered by an authorized re-seller of the Complainant however what is clear is that since the Respondent acquired the domain name he has used it to direct Internet traffic to a website that offers products that directly compete with the Complainant's products.
On the evidence, the Respondent is a re-seller of software for a competing company. He has used the domain name in bad faith by taking predatory advantage of the Complainant's name and mark to redirect Internet traffic to a website offering goods and services directly competing with the Complainant and its products.
In the course of these proceedings on February 24, 2010 the Respondent enquired as to whether the Complainant would offer to purchase the domain name. In the view of this Panel it is not necessarily the case that the domain name was registered or acquired for the purposes of selling it to the Complainant. It is equally possible that this enquiry was a desperate attempt by the Respondent to secure some advantage late in the day.
In the circumstances the Complainant has succeeded in the third and final element of the test in Paragraph 1 of the IEDR Policy and is entitled to succeed.
For all the foregoing reasons, in accordance with Paragraph 1 of the IEDR Policy, the Panel orders that the domain name <kaspersky.ie> be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: April 14, 2010