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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VMWARE, INC. v. Liheng / Just Traffic Supervision Consulting

Case No. D2015-1450

1. The Parties

The Complainant is VMWARE, INC. of Palo Alto, California, United States of America, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Liheng / Just Traffic Supervision Consulting of Hong Kong, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <vmware.biz> 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 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 name. On August 19, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2105.

The Center appointed Marilena Comanescu as the sole panelist in this matter on September 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.

The language of the proceeding is English.

4. Factual Background

The Complainant was established in 1998 and currently is a global leader in cloud infrastructure, having more than 500,000 customers including all of the “Fortune 100” companies and 55,000 partners worldwide, with revenues in 2014 totaling USD 6.035 billion and numerous awards in its field.

The Complainant is the owner of numerous worldwide trademark registrations for VMWARE, the earliest dating back to 1999, including Hong Kong Trademark Registration No. 301766944 of November 18, 2010 covering goods and services in classes 9, 41 and 42 and Chinese Trademark registration No. 5159704 of March 20, 2009 covering services in class 42.

The Complainant’s primary website at the domain name <vmware.com> was registered and used since January 30, 1998.

The Respondent has chosen not to submit any response to the contentions raised in the Complaint.

The disputed domain name <vmware.biz> was registered on April 12, 2014 and, at the time of filing the Complaint, it was used to park aggregator websites that offered competing services to those offered by the Complainant and occasionally redirected Internet users to the Complainant’s own website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to its trademark; that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In view of the absence of any reply to the Complaint by the Respondent, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are shown:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in 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

The Complainant has rights in the VMWARE trademark, holding registrations since 1999.

The disputed domain name <vmware.biz> reproduces the Complainant’s mark exactly.

It is well established in decisions under the UDRP that generic Top-Level Domains (e.g., “.com”, “.biz”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.

Given the above, the Panel finds that the disputed domain name <vmware.biz> is virtually identical to the Complainant’s trademark VMWARE, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant proved trademark rights in the VMWARE and further asserts it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or a bona fide offering of goods and services. In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, and the burden of production shifts to the Respondent. See paragraph 2.1 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Respondent chose not to challenge the Complainant’s allegations and did not come forward with any allegations or evidence of relevant rights or legitimate interests.

There is no evidence before the Panel to support the contrary, and therefore the Panel finds that the Complainant has established an unrebutted prima facie case.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name <vmware.biz>, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant’s trademark VMWARE is used since 1998, being registered worldwide, including since 2009 in Honk Kong, China where the Respondent is apparently located.

The disputed domain name was created in 2014 and incorporates the VMWARE trademark in its entirety.

Accordingly, it is not difficult for this Panel to infer that the Respondent had knowledge of the Complainant’s trademark and business, that the disputed domain name was registered with the Complainant’s trademark in mind and that the aim of the registration was to take advantage of the confusion between the disputed domain name and the Complainant’s rights.

At the time of filing the Complaint the disputed domain name was used to park aggregator websites that offered competing services to those offered by the Complainant and occasionally redirected Internet users to the Complainant’s own website. These facts support the inference that the purpose of the Respondent was diversion of traffic from the Complainant to itself via confusion with the Complainant’s mark for the Respondent’s own commercial gain, at the same time being likely to disrupt the Complainant’s business and damage its reputation. In the eyes of this Panel and based on the records in this file, the redirection at some times to the Complainant’s actual website cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name but to the contrary, this fact was likely to increase the confusion for the Internet user making them believe that the disputed domain name was somehow controlled or affiliated with the Complainant. Furthermore, the Complainant did not grant any right to the Respondent to incorporate its trademark in a domain name and had no control over the content displayed on website corresponding to the disputed domain name. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.

The Respondent was apparently involved in at least another two UDRP cases as respondent, see Emerson Electric Co. v. Liheng / Just Traffic Supervision Consulting, NAF Claim No. 1586640, and CollegeNET, Inc. v. Liheng / Just Traffic Supervision Consulting, NAF Claim No. 1534444. Further, in the Annex 10 to Complaint, the Complainant submitted evidence that the Respondent has registered several other domain names comprising third party’s trademarks, such as <hewlettpackard.biz> (containing the trademark HP-HEWLETT-PACKARD), <hormel.org> (containing the trademark HORMEL), <polaroid.biz> (containing the trademark POLAROID). Such circumstances indicate that the Respondent registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and demonstrate that the Respondent is engaged in a pattern of such conduct. Such fact constitutes bad faith under paragraph 4(b)(ii) of the Policy.

The Complainant states that, as a reaction to its cease and desist letter sent prior to commencing the present administrative procedures, the Respondent offered to sell the disputed domain name for USD 2,590 which constitutes an amount in excess of the out-of-pocket costs directly related to the registration of the disputed domain name. Such may constitute another circumstance of bad faith, pursuant to paragraph 4(b)(i) of the Policy.

Further, the Respondent did not put forward any justification for choosing and using such word in the disputed domain name.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name <vmware.biz> in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

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 <vmware.biz> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: October 8, 2015

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