WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VMWARE Inc. v. Namespro Private WHOIS
Case No. D2015-0309
1. The Parties
The Complainant is VMWARE Inc. of Palo Alto, California, United States of America, (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Namespro Private WHOIS of Richmond, Alberta, Canada.
2. The Domain Name and Registrar
The disputed domain name <wwwvmware.com> is registered with DNC Holdings, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2015. On February 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2015, the Registrar 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 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 February 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2015.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 25, 2015. 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 the owner, amongst others, of the following trademark registrations:
- United States Trademark registration No. 2,491,236 for VMWARE registered on September 18, 2001, to cover products in class 16;
- United States Trademark registration No. 2,764,540 for VMWARE registered on September 16, 2003, to cover products in class 09.
The disputed domain name <wwwvmware.com> was registered on August 4, 2013. Currently the disputed domain name resolves at times to a parking page with pay-per-click (“PPC”) links and at other times is redirected to the Complainant’s webpage.
5. Parties’ Contentions
The Complainant asserts that it is the global leader in cloud infrastructure, counting with more than 500,000 customers including 100 per cent of the Fortune 100, having had revenues in 2013 totaling USD 5.2 billion. It further states that it has continuously and extensively used the VMWARE trademark since at least as early as 1999, having registered such trademark in the United States in 2001 and in Canada in 2006.
The Complainant further asserts that the disputed domain name is substantially identical and confusingly similar to its VMWARE trademark because it incorporates the mark in its entirety merely adding the generic “www” prefix, which can lead Internet users into confusion when mistyping the period/dot in between the “www” and the desired domain name.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has not been commonly known by the disputed domain name;
(ii) the Respondent is using the disputed domain name to redirect Internet users to third-party websites, some of which directly compete with the Complainant, presumably in the pay-per-click format;
(iii) the Respondent sometimes is redirecting Internet users to the Complainant’s own website at “www.store.vmware.com”, which past Panels have concluded not to be a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; and
(iii) the Respondent has no relationship with the Complainant and has not received any license or permission to register the Complainant’s trademark in the disputed domain name.
Lastly, the Complainant asserts that the bad faith of the Respondent is evident given that the Respondent is intentionally misleading and attempting to redirect Internet users to its advantage. Furthermore the Respondent’s bad faith can also be proved by the fact that the Respondent can be considered a serial cybersquatter, having been named in several previous UDRP decisions. Moreover the bad faith of the Respondent can also be evidenced by the use of a privacy service to hide its identity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established its rights in its VMWARE trademark, duly registered in the United States and Canada.
The Complainant’s trademark is entirely reproduced in the disputed domain name and the addition of the prefix “www” in this Panel’s view does not distinguish the disputed domain name from the Complainant’s trademark.
Quite on the contrary: such an addition characterizes a form of typosquatting aimed at Internet users that forget to type the period/dot in between the “www” (which stands for “World Wide Web”) and the desired domain name in their browsers.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair 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 Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not licensed or otherwise permitted the Respondent to use the VMWARE trademark in the disputed domain name, nor is there any sort of relationship between the Complainant and the Respondent.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, corroborate with the indication of the absence of a right or legitimate interest.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, the use of the disputed domain name in connection with a parked website that displays links or pay-per-click advertisements related to the Complainant’s business characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from the links that solely exist in view of the association with the Complainant’s trademark.
Such use, in this Panel’s view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s trademark, thus capitalizing on the VMWARE trademark by creating a likelihood of confusion in Internet users who are likely to believe that the disputed domain name is either connected, endorsed or authorized by the Complainant.
Also, the redirection at some times to the Complainant’s own website cannot be understood under this Panel’s view and in view of the facts of this case as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Lastly, the existence of past UDRP decisions against the same Respondent and the use of a privacy service by the Respondent further support, in the circumstances of this case, the Panel’s finding of bad faith.
For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(iv) 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 <wwwvmware.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: April 7, 2015