WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VMWARE, Inc. v. Above.com Domain Privacy, Above.com / Domain Admin
Case No. D2015-1449
1. The Parties
Complainant is VMWARE, Inc. of Palo Alto, California, United States of America ("US"), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Above.com Domain Privacy, Above.com of Beaumaris, Victoria, Australia / Domain Admin of Pompano Beach, Florida, US.
2. The Domain Names and Registrar
The disputed domain names <cmware.com>, <vmwaare.com>, <vmwarre.com> and <vvmware.com> are registered with Above.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2015. On August 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 21, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 26, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 26, 2015.
The Center verified that the Complaint together with 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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on August 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 18, 2015.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on October 6, 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. Expiration Dates of the Disputed Domain Names
On August 28, 2015, the Center emailed the Registrar and noted that the registrations for the disputed domain names <vmwaare.com>, <vmwarre.com> and <vvmware.com> were set to expire on October 13 [sic], August 31, and September 10, 2015, respectively. Pursuant to paragraph 188.8.131.52 of the ICANN Expired Domain Deletion Policy (EDDP),1 the Center asked the Registrar to confirm (1) that the domain names will be placed in Registrar LOCK status until the UDRP proceedings are concluded, and (2) whether any action is required of the parties (by Respondent or Complainant) to keep the domain names under Registrar LOCK so that the administrative proceedings can continue as required under the UDRP.
After email correspondence between Complainant and the Registrar, Complainant paid the administrative fee to renew <vvmware.com>. On October 2, 2015, the Center emailed the Registrar and noted that Complainant had renewed <vvmware.com>. The new expiration date is September 10, 2016.
There was no further correspondence concerning <vmwaare.com> or <vmwarre.com>. However, as of this date WhoIs notes that the expiration dates of these two disputed domain names also have been extended a year, such that they are now set to expire on October 2 and August 31, 2016, respectively. It is not clear from the record before the Panel whether Complainant renewed these registrations. Regardless, all of the disputed domain names are active, and this proceeding can continue without further discussion concerning application of paragraph 184.108.40.206 of the ICANN EDDP.
5. Factual Background
Complainant is a leader in cloud infrastructure. It delivers virtualization infrastructure software solutions that provide compatible IT infrastructures while reducing capital and operating expenses. It preserves existing IT investments and enables more efficient, agile service delivery without compromising control, and strengthens security. Its software is "VMware vSphere". In 2014, Complainant had revenues totaling about USD 6 million and had more than 500,000 customers, including all of the Fortune 100 companies. Complainant's VMware vSphere software is used by the world's largest companies, including those in financial services, healthcare, pharmaceutical, and technology industries, such as IBM, Northwestern Mutual, Fuji Film and Teva Pharmaceutical Industries Ltd. Complainant has offices in the US, Canada, Latin America, Europe, Asia Pacific and the Middle East/Africa. It has a large network of distributors, resellers, x86 system vendors and integrators, direct sales, as well as global partner alliances.
In 2003, Complainant was acquired by, and became a subsidiary of EMC Corporation. In 2013, Complainant acquired Desktone, Inc. In 2014, Complainant acquired AirWatch.
Complainant's main website is located at "www.vmware.com".
Complainant is the owner of various trademark registrations in the US, Canada, and in OHIM countries for the mark VMWARE. The date of the earliest registration of the mark attached to the Complaint is November 27, 2001.
Respondent registered <cmware.com> on May 13, 2010, which is set to expire on May 13, 2016. Respondent registered <vmwaare.com> on October 3, 2015, <vmwarre.com> on August 31, 2009 and <vvmware.com> on September 10, 2009. The expiration dates of these three disputed domain names are discussed above in Section 4.
The disputed domain names revert to landing pages that display links to third-party websites. It would appear that each time a user types in these URLs a different website will be displayed.
6. Parties' Contentions
Complainant asserts that it has rights in the VMWARE trademark. It contends that the disputed domain names are confusingly similar to Complainant's mark because they are misspellings of Complainant's mark and thus constitute typosquatting. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain names, and that it registered and uses the disputed domain names in bad faith.
Respondent did not reply to Complainant's contentions.
7. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As set forth above, Complainant owns various trademark registrations for the VMWARE mark.
The disputed domain names vary from Complainant's VMWARE mark as follows:
<cmware.com> - the letter "v" has been replaced by "c", and the two letters are next to each other on a QWERTY keyboard;
<vmwaare.com> - another letter "a" has been added;
<vmwarre.com> - another letter "r" has been added;
<vvmare.com> - another letter "v" has been added.
Domain names that contain a common or obvious misspelling of a trademark are confusingly similar to the mark where the misspelled trademark remains the dominant or principal component of the domain name. Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775. This constitutes typosquatting, which many UDRP panels have found such domain names to be confusingly similar to the trademark. All four of the disputed domain names are obvious misspellings of Complainant's mark VMWARE, and thus Complainant has proven the first factor of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the VMWARE mark and has not authorized Respondent to register and use the four disputed domain names. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the VMWARE mark. Respondent is not known under the mark. Respondent has made no showing that it has any legitimate interest in using the disputed domain names or a bona fide offering of goods or services under the mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in the disputed domain names.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain names, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that:
"for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 website 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."
Registration in Bad Faith
It is difficult to conceive that Respondent did not know of Complainant's mark and products when Respondent registered the disputed domain names. As set forth above, Complainant's VMWARE products are protected by various US and international trademark registrations. Complainant uses the VMWARE mark for its software solutions. All of this occurred before Respondent registered the four disputed domain names. Further, the disputed domain names sometimes revert to Complainant's own website at "www.store.vmware.com" (see Asian World of Martial Arts Inc v Texas International Property Associates, WIPO Case No. D2007-1415). Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant's mark when Respondent registered the disputed domain names, and therefore registered them in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it "inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant's rights and interests".
Use in Bad Faith
Paragraph 4(b) of the Policy provides a list of non-exhaustive circumstances which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith.
The Panel notes that Respondent's pattern of registering four domain names in order to prevent Complainant from reflecting the mark in a corresponding domain name is a first indicator of bad faith.
Moreover, as set forth above, Respondent has engaged in typosquatting in all four of the disputed domain names by making small variations to Complainant's VMWARE mark and Complainant's <vmware.com> domain name, which might result from the Internet user's inadvertent error in typing Complainant's domain name. Typosquatting is considered "virtually per se registration and use in bad faith". Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568. SeealsoS.A.C.I. Falabella v. Hector Ramirez, WIPO Case No. DCO2015-0012 and cases cited therein. This prevents Complainant's potential customers from finding Complainant's products, which could have the effect of disrupting Complainant's business. See, e.g., Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323.
Typosquatting also evidences Respondent's attempt "to attract, for commercial gain, Internet users to [Respondent's] web site… by creating a likelihood of confusion with the [C]omplainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on your web site or location". The disputed domain names revert to landing pages that display links to third-party websites. Respondent's websites intentionally attract Internet users for commercial gain by linking to other websites through which Complainant's competitors sell similar goods and services. This creates a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of a product or service. It has long been held that this type of click-through revenue violates the Policy under paragraph 4(b)(iv). See, e.g., Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.
Additionally, Complainant sent Respondent a cease and desist letter on May 11, 2015, and reminders on May 21 and June 1, 2015. Respondent therefore was made aware of Complainant's rights in the VMWARE mark and Complainant's demand that it transfer the disputed domain names to Complainant. A failure of Respondent to respond to the cease and desist letter is another relevant factor in finding bad faith (see News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).
Accordingly, the Panel finds that the third element of the Policy has been established.
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 names <cmware.com>, <vmwaare.com>, <vmwarre.com> and <vvmware.com> be transferred to Complainant.
Sandra A. Sellers
Date: October 21, 2015
1 Paragraph 220.127.116.11 of the ICANN EDDP provides that "in the event a domain name which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the Complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant." (http://www.icann.org//en/registrars/eddp.htm)