WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Malwarebytes, Corp. v. Robert Burke
Case No. D2015-0908
1. The Parties
The Complainant is Malwarebytes, Corp. of San Jose, California, United States of America, represented by Fenwick & West, LLP, United States of America.
The Respondent is Robert Burke of Shenzhen, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <malwarebytesmac.org> is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 28, 2015. On May 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 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.
On June 3, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. On June 8, 2015, the Respondent requested that Chinese be the language of the proceeding.
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 in both Chinese and English, and the proceeding commenced on June 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2015. The Respondent did not file a formal response to the Complaint. On June 30, 2015, the Center informed the parties that it would proceed with panel appointment.
The Center appointed Francine Tan as the sole panelist in this matter on July 3, 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 states it is a leading provider of anti-spyware software and security solutions. Its flagship product, Malwarebytes Anti-Malware, is a very popular tool and "keeps more than 80 million computers protected around the globe". The Complainant has earned an international reputation for its rapid response and high success rate in combating new, malicious digital threats.
The Complainant's MALWAREBYTES trade mark has been used in connection with its products and services since 2004. The Complainant gave evidence of its U.S. and Community trade mark registrations. The Complainant is also the registrant of many generic and country-code Top-Level Domain ("TLD") names incorporating the MALWAREBYTES trade mark, including <malwarebytes.com>, <malwarebytes.net>, <malwarebytes.org>, <malwarebytes.info>, <malwarebytes.biz> and <malwarebytes.us>.
The disputed domain name was registered on December 24, 2013.
5. Parties' Contentions
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant's trade mark as it includes the entire MALWAREBYTES trade mark. The addition of "mac" in the disputed domain name does not remove the likely confusion as "mac" simply describes the relevant computing platform and such a descriptive matter in fact creates confusion.
The Complainant further asserts that the Respondent does not have rights or legitimate interests in relation to the disputed domain name as:
(i) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or in connection with demonstrable preparations to offer such goods or services; and
(ii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent is using the disputed domain name to intentionally mislead consumers into believing that the website to which the disputed domain name resolves provides a Macintosh version of the Complainant's anti-spyware product. This is demonstrated by the Respondent's repeated use of the phrases "MalwareBytes for Mac Equivalent" and "MalwareBytes for Mac Alternative" on its website. The Respondent has no affiliation with the Complainant's Malwarebytes product.
Lastly, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. This is evidenced by the fact that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's MALWAREBYTES trade mark. What is in fact offered on the Respondent's website is something called "MacKeeper" which is totally unrelated to the Complainant's Malwarebytes-branded product and unaffiliated with the Complainant. The Respondent's intention must have been to divert consumers looking for the Complainant's Malwarebytes-branded product from the Complainant's website to the Respondent's website. The Respondent is trading unfairly on the Complainant's MALWAREBYTES trade mark and name. The likelihood of confusion is also added by the layout and appearance of the Respondent's website.
Apart from an email of June 8, 2015 wherein the Respondent requested that Chinese be the language of the proceeding, the Respondent did not file a formal response to the Complaint.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement is Chinese but the Complainant requested for English to be the language of the proceeding. The Complainant pointed out that (i) the website of the Respondent is entirely in the English language; and (ii) the disputed domain name comprises two words in English, as opposed to words transliterated from Chinese or in Chinese characters. On the other hand, the Complainant is unable to communicate in Chinese and it would be a heavy burden to require that the Complainant conduct this proceeding in Chinese. Requiring the Complainant to submit all the documents in Chinese would unduly delay the proceeding and require the Complainant to incur substantial expenses for translation.
The Respondent submitted a request in Chinese to the Center for Chinese to be the language of the proceeding. He said that although his website contents are in English, it cannot be assumed he can clearly understand fully in English. He said that although he is Chinese, he can understand and communicate only in simple English and it would be difficult for him to understand legal documents in English. To avoid inconvenience to him, it would be more suitable for him for the Chinese language to apply in the proceeding.
Paragraph 11(a) of the Rules stipulates that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
In the exercise of its discretion pursuant to paragraph 11 of the Rules, the Panel determines that it would be appropriate for English to be the language of the administrative proceeding in this case. The Panel is satisfied by the evidence put forward by the Complainant and by reading the content of the Respondent's email of June 8, 2015 that the Respondent is sufficiently comfortable with English and understands the nature of the administrative proceeding. Moreover, Chinese translations of the nature of the deadlines and requirements the Respondent had to meet were provided by the Center to the Respondent. The Panel notes that the Respondent (although claiming to be a Chinese national) signed off in the email as "Richard Burke". The Respondent evidently has a sufficient level of understanding and appreciation of the English language for him to be able to select a domain name that comprises a reputable trade mark with a descriptor, "mac", and to adopt an English forename and surname, Richard Burke.
Taking into account the surrounding circumstances including the fact that the Respondent is clearly operating his business and website in English and the policy consideration of paragraph 10(c) of the Rules, namely "to ensure that the administrative proceeding takes place with due expedition", the Panel determines that English should be the language of the proceeding.
B. Identical or Confusingly Similar
The Complainant undoubtedly has rights to the trade mark MALWAREBYTES. This trade mark has been incorporated in its entirety within the disputed domain name and is identifiable therein. The only difference between the disputed domain name and the Complainant's trade mark lies in the element, "mac". This addition does not prevent a finding of consuming similarity with the Complainant trade mark. Moreover, "Mac" is a well-known and common term which refers to Apple's Mac/Macintosh products. The Panel agrees that the addition of the term "mac" does not serve, in the context of the kind of goods that the Complainant deals in and what the Respondent purports to be offering on his website, to remove the confusion with the Complainant's trade mark but, rather, adds to it.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
In the absence of any relationship between the parties or authorization from the Complainant to the Respondent's use of the MALWAREBYTES trade mark and registration of the disputed domain name, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The burden accordingly shifts to the Respondent to produce evidence to substantiate his rights or legitimate interests in respect of the disputed domain name. (See paragraph 2.1 of the WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").) There is no evidence that the Respondent is commonly known by the disputed domain name whereas the Respondent appears to have been using the disputed domain name to misleadingly divert consumers for commercial gain: the choice of the generic term "mac" in the disputed domain name and the phrases "MalwareBytes for Mac Equivalent" and "MalwareBytes for Mac Alternative" appearing on the Respondent's website reflect an intention by the Respondent to mislead and divert consumers for commercial gain. The way the Respondent's website is presented is incongruous with a claim of there being a bona fide offering of goods. The Respondent's website offers for sale products unrelated to the Complainant's product and unaffiliated with the Complainant.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Panel finds that this is a classic case of cybersquatting and the circumstances fall within paragraph 4(b)(iv) of the Policy which states:
"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."
The Policy is intended to deal with such abuses of a third party's trade mark rights. The Panel therefore concludes that the disputed domain name was registered and used in bad faith.
The Complainant has established the third element of paragraph 4(a) 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 <malwarebytesmac.org> be transferred to the Complainant.
Date: July 8, 2015