WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
iS3, Inc. v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois protection, this company does not own this domain name s.r.o.
Case No. D2016-0933
1. The Parties
The Complainant is iS3, Inc. of Boca Raton, Florida, United States of America ("United States" or "U.S."), represented by Hollimon, P.A., United States.
The Respondent is Hulmiho Ukolen, Poste restante of Helsinki, Finland / Domain Admin, Whois protection, this company does not own this domain name s.r.o. of Prague, Czech Republic.
2. The Domain Name and Registrar
The disputed domain name <stopzila.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 10, 2016. On May 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 20, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 20, 2016.
On May 20, 2016, the Center sent an email communication to the parties in both Finnish and English regarding the language of the proceeding. On May 20, 2016, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 the Respondent of the Complaint, and the proceedings commenced on May 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 16, 2016.
The Center appointed George R. F. Souter as the sole panelist in this matter on June 22, 2016. 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.
Language of the Proceeding
As a preliminary matter, the Complainant stated in the Complaint that it believes that the language of the registration agreement in connection with the disputed domain name is English, and the Complaint was filed in English. An enquiry by the Center to the Registrar with whom the disputed domain name is registered, however, disclosed that the language of the registration agreement is Finnish. As the Complainant is a U.S. corporation, and as the Respondent did not avail itself of the opportunity to participate in these proceedings despite being provided with all relevant communications in Finnish, the Panel exercises its discretion under the Rules, and decides that the language of proceedings in this case shall be English.
4. Factual Background
The Complainant is the owner of the trademark STOPZILLA, used in conjunction with computer security software. The Complainant has continuously used its STOPZILLA mark in commerce since May 23, 2002. In May 2005, the Complainant obtained a United States Trademark registration for its STOPZILLA mark, registration number 2949553. However, this registration was cancelled when the Complainant did not timely file its 10 year renewal. The Complainant has a pending United States Trademark application to renew its STOPZILLA trademark registration, serial number 86846054, that was due to be published for opposition on May 3, 2016. Details of the above-mentioned registration and application have been supplied to the Panel.
The disputed domain name was registered on May 31, 2008.
5. Parties' Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its STOPZILLA trademark, only differing from its STOPZILLA trademark by omitting one of the two letters "l" .
The Complainant alleges that the Respondent is not using the disputed domain name in conjunction with a bona fide offering of goods or services. Moreover, the Complainant alleges that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and that the Respondent's current website is merely used to spread "scareware" and to create fake error messages, to confuse consumers into connecting with a fake tech support, and then to steal personal and financial data. The Complainant further alleges that there is no indication that the Respondent is known by the name "stopzila", and that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant alleges that the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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 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
It is well established in past decisions under the UDRP that generic Top-Level Domain ("gTLD") indicators (e.g., ".com", ".info", ".net", ".org") may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator ".com" to be irrelevant in the present case.
The Complainant does not appear to currently enjoy registered trademark rights to its STOPZILLA trademark. However, it did manage to persuade the United States Patent Office of its entitlement to such rights in 2005, and it enjoyed registration rights in the U.S. at the date of registration of the disputed domain name. The Complainant alleges that it has used its STOPZILLA trademark continuously since 2002, but did not supply evidence to the Panel of the quantum or extent of such use. The Panel, in its reasonable discretion, has consulted the Internet, and has found sufficient evidence of use to find that the Complainant's STOPZILLA trademark is a trademark in which the Complainant has rights, as required by paragraph 4(a)(i) of the Policy, which the Panel so finds.1
In the Panel's opinion, the general appearance of the disputed domain name is confusingly similar to the Complainant's STOPZILLA trademark, and the omission of a second "l" is insufficient to avoid a finding of confusing similarity. The Panel, accordingly, finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant (see section 5) as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the only difference between the Complainant's trademark and the disputed domain name is omission of a single letter, is sufficient to justify a finding that the disputed domain name has been registered in bad faith, and the Panel, accordingly, finds that the disputed domain name was registered in bad faith.
The Panel notes that the Respondent "Hulmiho Ukolen" has appeared as respondent in a number of prior UDRP cases, for example, Société nouvelle d'études, d'éditions et de publicité SNEEP v. Whois Protection / Hulmiho Ukolen, WIPO Case No. D2015-0663 and American Woodmark Corporation v. Domain Admin, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2015‑0641. From these prior UDRP cases a pattern of abusive registrations is, in the Panel's opinion, clear. It is the consensus view of panels in prior cases under the UDRP, for example, Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0046; Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Investone Retirement Specialists, Inc. v. Motohisa Ohno, WIPO Case No. D2005-0643; Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968; AMPO, S. COOP v. Contactprivacy.com, Taeho Kim, Philippine, WIPO Case No. D2009-0177 and Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798, with all of which the Panel agrees, that where a pattern of abusive registrations can be elicited, a finding that a respondent falls foul of the provisions of paragraph 4(a)(iii) of the Policy is justified. The Panel so finds in the circumstances of the present case, and, accordingly finds that the Respondent falls foul of the provisions of paragraph 4(a)(iii) of the Policy. This is supported by the claim of using the disputed domain name for "scareware" to obtain users personal information.
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, <stopzila.com>, be transferred to the Complainant.
George R. F. Souter
Date: July 6, 2016
1 As to the legitimacy of the Panel performing individual searches, see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").