WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Electronic Frontier Foundation v. Shawanda Kirlin
Case No. D2015-1628
1. The Parties
The Complainant is Electronic Frontier Foundation of San Francisco, California, United States of America (“United States”), represented internally.
The Respondent is Shawanda Kirlin of Bali, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <electronicfrontierfoundation.org> 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 September 11, 2015. On September 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 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 September 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2015.
The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on October 27, 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 a non-profit organization that defends user privacy, free expression and innovation. It advises policymakers and educates the press and the public through analysis, education guides, workshops and the like.
The U.S. trademark ELECTRONIC FRONTIER FOUNDATION No. 1,808,177 is registered in the name of Electronic Frontier Foundation, Inc. in class 42, for “advocacy services; namely promoting public access to computer-based communications resources and the privacy of personal information contained within computer-based communications”. The mark was registered on November 30, 1993.
The Complainant has been using the mark since as early as 1992.
The Complainant’s official website is “www.eff.org”.
Since 2010, the Complainant has offered computer software and web browser plug-ins to the public, and offers in particular privacy software that blocks advertisements and tracking cookies that do not respect the “Do Not Track” setting in a user’s web browser.
The disputed domain name was registered on August 4, 2015.
On August 13, 2015, the Complainant was informed that the disputed domain name was being used to confuse consumers by redirecting them to the Complainant’s official website only after surreptitiously installing malicious software on the computers of unsuspecting visitors. According to an affidavit of a Staff Technologist of the Complainant, the malicious code exploited a known vulnerability in the computer programming language Java, by disabling Java security settings which allows it to execute arbitrary Java code without having to ask for the user’s permission.
The incident was reported in the media, for instance in an article published on August 28, 2015 on the website of Ars Technica under the title “Fake EFF site serving espionage malware was likely active for 3+ weeks”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark ELECTRONIC FRONTIER FOUNDATION.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, as none of the circumstances contemplated in paragraph 4(c) of the Policy are present in this case.
The Complainant contends also that the Respondent has registered and used the disputed domain name in bad faith, as it was used in connection with a website delivering malicious computer software, and redirecting infected visitors to the Complainant’s official website. The Complainant contends that these facts strongly suggest that the disputed domain name was registered for the purpose of supporting a phishing campaign, i.e. an attempt to discover sensitive information such as usernames, passwords or personal details, by confusing consumers into believing that the attacker, to whom information is actually being provided, is in fact a different, trustworthy entity to whom consumers desire to provide information.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the 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) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant contends that it has rights to the U.S. trademark ELECTRONIC FRONTIER FOUNDATION No. 1,808,177. The provided copy of the registration certificate for the mark mentions that the owner of the registration is Electronic Frontier Foundation, Inc., a corporation organized under the laws of the state of Massachusetts, with an address in Cambridge, Massachusetts.
In view of the discrepancy between the legal form of the entity recorded as the trademark owner (a Massachusetts Corporation) and that of the Complainant (a nonprofit California organization), and the different addresses, the Panel considered it appropriate to conduct a Trademark Electronic Search System search in the United States Patent and Trademark Office’s database. The Panel could observe that the address of the trademark owner currently corresponds to the address indicated in the Complaint as the Complainant’s address.
The Complainant did not offer an explanation on the relationship between the Corporation organized under the laws of Massachusetts and the California entity, or how the Complainant may have come to the rights of such Corporation. However, given that the name of the Complainant is the same as the name of the trademark owner of record, that they have the same address, and that the Respondent did not contest the trademark rights of the Complainant, the Panel is prepared to accept that the Complainant has rights to the trademark ELECTRONIC FRONTIER FOUNDATION.
The disputed domain name is identical to the Complainant’s trademark.
The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent is not a licensee of the Complainant, nor has the Complainant granted the Respondent an authorization to use the disputed domain name. Moreover, there is no indication that the disputed domain name corresponds to the Respondent’s name.
The Respondent has used the disputed domain name in connection with a website surreptitiously installing malicious software on the computers of unsuspecting visitors. This does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use.
Furthermore, the Respondent did not file a Response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). It is the Panel’s inference that the Respondent’s silence corroborates the Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The mark ELECTRONIC FRONTIER FOUNDATION long predates the disputed domain name. The Complainant offers computer software and web browser plug-ins to aid in Internet browser security. The disputed domain name was used in connection with a website which redirected visitors to the Complainant’s official website.
In these circumstances, it is highly likely that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name.
According to the uncontested evidence submitted by the Complainant, including press articles, the Respondent has used the disputed domain name in connection with a website surreptitiously installing malicious software on the computers of unsuspecting visitors, and redirecting infected visitors to the Complainant’s official website. This constitutes use in bad faith, as several panels have found in prior cases (see Twitter, Inc. v. Moniker Privacy Services/accueil des solutions inc, WIPO Case No. D2013-0062; Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303: “As such even though it cannot be held that the Respondent’s conduct falls strictly within one of the specific examples of conduct that constitutes bad faith set out in the Policy, including the two set out above, these examples are non exhaustive. Due to the deceptive and malicious conduct of the Respondent the Panelist finds that the Domain Name has been registered and used in bad faith”; DivX, LLC v. Domain Admin / CSRUS Enterprises, WIPO Case No. D2011-0600).
The Panel considers, in view of such circumstances, that the Respondent registered and used the disputed domain name in bad faith.
Therefore, the Panel finds that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) 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 <electronicfrontierfoundation.org> be transferred to the Complainant.
Anne-Virginie La Spada-Gaide
Date: November 10, 2015