WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sophos Limited v. Ardindata, Ardindata / Privacyprotect.org
Case No. D2013-0965
1. The Parties
The Complainant is Sophos Limited, The Pentagon of Abingdon, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by DLA Piper UK LLP, United Kingdom.
The Respondent is Ardindata, Ardindata / Esfahan, Iran, (Islamic Republic of Iran) /
Privacyprotect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <iransophos.com> 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 May 30, 2013. On May 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 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 June 13, 2013 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 June 18, 2013.
The Center verified that 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 June 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2013. On July 12, 2013, the Center transmitted by email the Notification of Respondent Default.
The Center appointed Mohamed-Hossam Loutfi as the sole panelist in this matter on September 10, 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.
Two brief emails were received from Mr. Ehsan Mohammadi [<master.shell@[....]>] in reply to the Notification of Complaint both of June 20, 2013. The Center acknowledged receipt of the emails on June 24, 2013. A further email was received from the same email address, after the notification of the appointment of the administrative panel on September 11, 2013. The email reads as follows:
I am not the owner of that domain.
Please remove my email from contact list of iransophos.com domain.
The email was acknowledged and forwarded to the Panel.
4. Factual Background
The Complainant is a UK registered company incorporated on February 4, 1987 and the Complainant is a market leading developer and vendor of computer security software and hardware; which trades under the name “Sophos”. The founders of the Sophos business started trading under the Sophos name in 1985, but did not incorporate the Complainant company until 1987 through a different entity.
The Complainant’s principal website is hosted at the domain name <sophos.com> (“The Complainant Website”), which was registered on February 17, 1995. It also owns and uses a range of other domain names which incorporate the name “Sophos” (the “Complainant Domains”).
The Complainant markets its products and services via the Complainant Website, which has versions in eleven different languages. In the month of March 2013, the Complainant's Website had over a million visits, from approximately 760,000 individuals.
The Respondent appears to be a company called “Ardindata” based in Esfahan, Iran. The Respondent registered the disputed domain name with the Registrar on May 14, 2012.
After the date of registration and prior to the commencement of the present proceedings (since at least early March 2013), there has been a website hosted at the disputed domain name (“The Respondent’s Website”), which displays the SOPHOS Logo on every page (in each case reproducing identically the font and colour of the SOPHOS Logo) and purports to offer for sale the Complainant’s software by reference to the SOPHOS Marks and the SOPHOS Anti-Virus Marks.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it holds rights for the following reasons:
(i) The dominant part of the disputed domain name is the word “Sophos”, which is identical to the “registered trademark SOPHOS” which has been registered in numerous countries “all over the world”. The addition of the geographical term “Iran” as a prefix to the name Sophos does not “have any impact on the overall impression of the dominant part of the name”. Dell Inc. v. Radvar Computers LLC, WIPO Case No. D2007-1420 and C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc, WIPO Case No. D2004-0466.
(ii) As a result of the Complainant having spent “millions of dollars each year in advertising and promoting its trademarks, products, services and image”, it has “created substantial goodwill around the world” in the “SOPHOS mark”. Its billings for 1012 were $402.9 billion.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
(i) The Domain Name has been used to promote the same services offered by the trademark owner.
(ii) The Respondent has not been licensed nor authorized to use the SOPHOS trademark.
(iii) The Respondent is using the Domain Name to promote the services of the “website owner”.
(iv) The website was created and is used by the Respondent for commercial purposes and is also misleading consumers and tarnishing the trademark at issue.
(v) The Respondent is not a distributor of the Complainant.
The Complainant, lastly, contends that the disputed domain name was registered and is being used in bad faith for the following reasons:
(i) Given the fame of the Complainant’s trademarks and business, the Respondent was aware of the existence of the SOPHOS trademark when it registered the disputed domain name.
(ii) This is further evidenced from the fact that the Respondent is selling Sophos products through the disputed domain name.
(iii) The content of the website at the disputed domain name shows both the trademarks and the logos of the Complainant which by itself constitutes a case of infringement of IP rights. This makes it obvious that the Respondent was, and is, completely aware of the existence of the Complainant’s rights.
(iv) The Respondent did not reply to a “cease and desist letter” that was sent to it by the Complainant lawyers DLA Piper on March 8, 2013. On March 15, 2013, DLA Piper received a partial response from the email address < email@example.com>. This is the only email the Complainant has received from <firstname.lastname@example.org> and it did not provide any name or contact details. This failure to respond is said of itself to evidence bad faith and the Complainant relies in this respect upon the decisions in America Online, Inc v. Viper, WIPO Case No. D2000-1198 and Nintendo of America Inc. v. Domain Privacy Group / Domain Admin, WIPO Case No. D2013-0322.
In the Complaint, the Complainant states that in response to its communication of March 15, 2013, the Respondent requested proof that DLA Piper were genuinely acting for Sophos. The Respondent asserted that the Respondent's Website was “completely informative”, and was “just giving some information about Sophos software and history and products and no products are sold in the website”. The Respondent asserted that IranSophos brand has been registered in Iran since 1980.
The Complainant’s representative replied to the Respondent on March 18, 2013, by a letter that was signed by the Complainant’s Vice President Financial Control.
Apart from the above mentioned emails from Mr. Ehsan Mohammadi from [<master.shell@[....]>], no formal response was received from the Respondent.
6. Discussion and Findings
A. Scope of the Policy
The Panel’s jurisdiction is limited to the determination whether the Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, paragraph 4(a).
Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel notes that the Complainant has several trademark registrations for SOPHOS. Additionally, the Panel notes here that to succeed in establishing unregistered trademark rights the Complainant must show that the name relied upon has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the Complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered trademark rights can arise for the purposes of the Policy even whena complainant is based in a civil law jurisdiction.
However, a conclusory allegation of unregistered trademark rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. (UITGERVERIJ CRUX v. W. FREDERIC ISLER, WIPO Case No. D2000-0575, Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, and Instra Corporation Pty Ltd v. Domain Management SPM, WIPO Case No. D2009-1097.
On the record in this case, the Panel finds that the Complainant has rights to the trademark SOPHOS through trademark registrations and finds that the name has become a distinctive identifier associated with the Complainant’s goods and services in the relevant field. It is clear that the disputed domain name containing the principal part of the mark SOPHOS in which the Complainant has rights is virtually identical or at least confusingly similar for the purposes of the Policy.
The Panel agrees with the Complainant that the addition of the pre-fix “iran” in the disputed domain name does not, in this case, avoid a finding of confusing similarity. As the panel in C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc., WIPO Case No. D2004-0466 stated: “The addition of a geographical suffice to a trademark […] is a common way of indicating the geographical area that goods are offered under a trademark”. Dell Inc. v. Radvar Computers LLC, WIPO Case No. D2007-1420.
The disputed domain name <iransophos.com> incorporates Complainant’s entire SOPHOS mark and adds only the geographic term “Iran” and the generic top level domain (gTLD) “.com”. The gTLD “.com” can be disregarded for purposes of confusing similarity under the UDRP. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name “.com” is … without legal significance since use of a gTLD is required of domain name registrants”); Six Continents Hotels, Inc. v. Albert Jackson, WIPO Case No. D2003-0922 (“the addition of a geographically descriptive term to a mark does not exclude confusing similarity with the mark”); and BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097 (finding a domain name confusingly similar to a mark where the respondent merely added a country name to a well-known trademark).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
If the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests and the Respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, or any other basis for rights or legitimate interests, then the Complainant is deemed to have demonstrated that the Respondent lacks rights and legitimate interests in the disputed domain name. See Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016.
The Panel accepts that use of a mark with an intention to derive advantage of such mark amounts to non-legitimate use and does not confer any rights to a respondent. (DivX, LLC v. PrivacyProtect.org / Gerente de Dominia, CSRUS Enterprises, WIPO Case No. D2011-0600 and Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the circumstances of this case, the Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the disputed domain name, or that Respondent has made noncommercial or fair use of the name. The Panel also finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
In the circumstances, also taking into account the Panel’s findings below, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Panel accepts the Complainant’s contention that the Respondent registered the disputed domain name in the knowledge of the Complainant’s business and its use of the “Sophos” name. This is inherently probable given the undisputed fame of the Sophos name worldwide. Further, it is difficult to interpret the disputed domain name as anything other than as a reference to Sophos’s business in Iran. However, the Complainant submits that it carries no activities in Iran.
The Panel finds that the Respondent is using the Complainant’s SOPHOS Logo and the Complainant’s trademarks at the website with the disputed domain name without the authorization of the Complainant. The Panel further finds that the reproduction of facts about the Complainant’s business at the Respondent’s website is calculated to give false association between the Complainant and the Respondent.
The Respondent has not rebutted Complainant’s allegation of bad faith use. Under paragraph 4(b)(iv) of the Policy, it is evidence of bad faith that, “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 web site or location or of a product or service on your web site or location.”
Therefore, the Panel finds that the Complainant has satisfied the third element of paragraph 4(a) of the Policy.
For all 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 <iransophos.com> be transferred to the Complainant.
Dated: September 24, 2013