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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Focus IP, Inc. d/b/a AppDetex v. Registration Private, Domains By Proxy, LLC / Hieu Nguyen

Case No. D2016-1447

1. The Parties

1.1 The Complainant is Focus IP, Inc. d/b/a AppDetex of Boise, Idaho, United States of America (“USA”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, USA.

1.2 The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, USA / Hieu Nguyen of Ho Chi Minh, Viet Nam.

2. The Domain Names and Registrar

2.1 The disputed domain names <appdetex.co> and <appdetex.net> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2016. On July 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On the same date, 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 the Complainant on July 19, 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 amendment to the Complaint on July 19, 2016.

3.2 The Center verified that the Complaint together with the amendment to 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2016.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on August 29, 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.

4. Factual Background

4.1 The Complainant was established in 2012 and is a Delaware based corporation with its headquarters in Boise, Idaho, USA. The Complainant is said to be a global brand protection company that combats brand infringement, fraud and piracy in the complex worlds of mobile apps, marketplaces and domain names. The Complainant is also said to develop best-in-class technologies and methodologies that expose and enable takedowns of often-criminal activities found online. The Complainant is said to through leading search and discovery, constant monitoring, meticulous case management, comprehensive reporting and swift and effective enforcement; help some of the most recognizable brands in the world to reduce consumer confusion, brand dilution and fraud while protecting reputations, credibility and company bottom lines. The Complainant is the owner of the trademark APPDETEX, which, it is said, has been used in interstate commerce since January 1, 2013; and a USA trademark registration for the APPDETEX trademark with registration number 4,484,156 registered on February 18, 2014. The Complainant is also the registrant of the domain name <appdetex.com> created on April 27, 2012, albeit, registered in the name of the Complainant’s founder and CEO named Mr. Faisal Shah.

4.2 The Respondent registered the Disputed Domain Names namely, <appdetex.net> and <appdetex.co> on January 7, 2016 according to the WhoIs records attached to this proceeding. On July 19, 2016, and after the Complainant filed this Complaint on July 15, 2016, the Center received an email from the Registrar naming the registrar-identified registrant as “Hieu Nguyen” of Ho Chi Minh, Viet Nam.

4.3 The Disputed Domain Names resolve to websites that copy the look and feel of the Complainant’s website.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant submits that each of the two Disputed Domain Names is identical and or confusingly similar to the APPDETEX trademark because they wholly include the Complainant’s APPDETEX trademark. The Complainant further submits that the inclusion of the Top-Level Domains “.net” and “.co” in the Disputed Domain Names are irrelevant for purposes of conducting a confusing similarity test under paragraph 4(a)(i) of the Policy. The Complainant further submits that where as here the second-level domain name contains a complainant’s trademark, and only such trademark, in its entirety, it is self evident that the disputed domain name is identical or confusingly similar to the complainant’s trademark. See Surveymonkey Inc. v. Guanyong sun, WIPO Case No. DCO2014-0012 and Easygroup IP Licensing Limited v. Wang Tao, WIPO Case No. DCO2012-0001 amongst other previous UDRP decisions cited by the Complainant.

5.2 The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names as the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s APPDETEX trademark in any manner. It is contended on behalf of the Complainant that this fact on its own can be sufficient to prove the second requirement of the Policy. See Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272. In addition, it is submitted that as the Respondent is using the Disputed Domain Names to redirect Internet visitors to “mirror” websites, i.e., websites that are nearly identical to the Complainant’s website using the Disputed Domain Names <appdetex.co> and <appdetex.net>, the Respondent is neither using the Disputed Domain Names in connection with a bona fide offering of goods or services or without intent for commercial gain to misleadingly divert Internet visitors. Accordingly, it is argued that the Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names pursuant to either paragraph 4(c)(i) or 4(c)(iii) of the Policy. See the following recent cases cited in support of these submissions namely, Avon Products Inc. v. Domains Administrator c/o Dynadot Privacy, WIPO Case No. D2013-20256 and Diamond Hill Investment Group Inc. v. Carole Elkins, WIPO Case No. D2015-1191. Further or in the alternative, it is argued that to the Complainant’s knowledge the Respondent has never been known by any of the Disputed Domain Names and therefore cannot establish any rights or legitimate interests. In particular, since the Registrant of the Disputed Domain Names is “Registration Private, Domains By Proxy, LLC / Hieu Nguyen” and not “AppDetex” this fact combined with the lack of evidence in the WhoIs records is sufficient to confirm that the Respondent is not commonly known by the Disputed Domain Names or any variation thereof.

5.3 The Complainant submits that the Respondent should be considered as having registered and being engaged in using the Disputed Domain Names in bad faith on the following grounds. Firstly, the Complainant alludes to the Respondent’s usage of the Disputed Domain Names to redirect Internet visitors to mirror websites that are nearly identical to the Complainant’s website and asserts that such conduct constitutes bad faith use pursuant to paragraph 4(b)(iv) of the Policy and following Wikimedia Foundation Inc. v. Sam HE/Attn: wikipediacn.info, WIPO Case No. D2015-1425. Secondly, the Complainant asserts that the Respondent is intentionally creating a confusion to Internet users as to the source, affiliation, location and to the products and services offered, by copying the Complainant’s website. Such conduct, it is argued, constitutes not only a disruption of the Complainant’s business but also confirms bad faith registration and use following Diamond Hill Investment Group Inc. v. Richard Stroud, WIPO Case No. D2016-0510. Thirdly, it is said that the Respondent is using the Disputed Domain Names to collect information from Internet visitors for the commercial benefit of the Respondent, but to the detriment of the Complainant, through the “Contact Us” web pages associated with the Disputed Domain Names. Such conduct, it is said, is further evidence of bad faith use, as it also allows for the abuse of information to the detriment of the Complainant and its clients following Digitalis v. Virginie Charuel, SACO, WIPO Case No. D2015-2266. Fourthly, the fact that the Respondent registered two Disputed Domain Names that wholly incorporate the Complainant’s APPDETEX trademark and which are both used in connection with mirror websites constitutes a pattern of conduct that establishes bad faith use. See in this regard Inter-Continental Hotels Corporation v. James Alex, Design Factory, WIPO Case No. D2010-0974. Fifthly, it is contended that a further indication of bad faith is the fact that the registration of the Complainant’s APPDETEX trademark in the USA pre-dates the Respondent’s creation of the two Disputed Domain Names by more than two years. Accordingly, it is argued that it is inconceivable that the Respondent could not have had prior knowledge or actual notice of the Complainant’s activities, registered trademark and name under which the Complainant conducted its business before the Respondent elected to create the Disputed Domain Names. See Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management L.P.v. M On, WIPO Case No. D2012-1009.

5.4 In the Complainant’s amendment to the Complaint dated July 19, 2016, the Complainant identifies two other factors indicating bad faith use on the part of the Respondent. The first is “cyber flight” as the Disputed Domain Names were transferred to the newly identified Respondent “Hieu Nguyen” after the original complaint was filed at the Center on July 15, 2016, in breach of paragraph 8(a) of the Policy. Accordingly, it is argued that such conduct is further evidence of bad faith pursuant to paragraph 4(a)(iii) of the Policy. See LPG Systems v. Jerry/Mr. Jeff Yan, WIPO Case No. D2010-0387. The second factor is the fact that the newly identified Respondent, “Hieu Nguyen” was found to have established a pattern of conduct by the creation of two disputed domain names in a previous UDRP decision in Steamatic Inc., v. Hieu Nguyen, NAF Claim No. 096185. In that case the complainant successfully obtained the transfer of two disputed domain names created by the respondent, Hieu Nguyen, on the basis that the respondent had registered more than fifty domain names, many of which appear to be trade names of registered companies or other famous names.

B. Respondent

5.5 The Respondent did not reply to the Complainant’s contentions. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding the Complainant must prove that: (i) the Disputed Domain Names are identical or confusingly similar to the trademark or service mark of the Complainant; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish each of these three elements to succeed under the Policy.

A. Identical or Confusingly Similar

6.3 The Panel finds without any hesitation that the Disputed Domain Names <appdetex.net> and <appdetex.co> are confusingly similar to the Complainant’s trademark APPDETEX, which appears to be widely known in the information technology sector. In essence, the Panel finds that the Disputed Domain Names wholly incorporate the Complainant’s trademark and the mere addition of the Top-Level Domains of “.net” and “.co” does absolutely nothing to preclude a finding of confusing similarity following a confusing similarity examination. The Panel is therefore satisfied, following numerous other UDRP decisions, that where as in the case a disputed domain name wholly incorporates a complainant’s trademark, the requirement of confusing similarity would be satisfied without more. See in this regard Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615 and in particular, EasyGroup IP Licensing Limited v. Wang Tao, supra.

6.4 The Panel therefore finds that the Complainant has established that the Disputed Domain Names are identical or confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

6.5 The Panel also finds that the Respondent has failed to furnish any evidence of circumstances required to establish that there exists any rights or legitimate interests in the Disputed Domain Names within the ambit of paragraph 4(c) of the Policy. As the Complainant contends, the Respondent has not been authorised or licensed by the Complainant to utilize or register the Disputed Domain Names nor is there any evidence that the Respondent has ever been associated or affiliated with the Complainant. See Six Contents Hotels, Inc. v. IQ Management Corporations, supra. As held in previous UDRP decisions the burden of proof shifts to the Respondent to establish the existence of any rights or legitimate interests in the Disputed Domain Names, where a prima facie case has been established by the Complainant. See in support of this contention Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. More importantly, from the unchallenged evidence adduced by the Complainant, in the form of website screenshots marked Annexes 5 and 6, it is evidently clear from a comparison of those website screenshots that the Respondent deployed the Disputed Domain Names to mirror websites that are identical to the Complainant’s website for the Respondent’s commercial benefit. The Panel is satisfied that such unauthorized conduct cannot be described as a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Disputed Domain Names as stipulated in the decision of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001- 0903. See further in this regard Diamond Hill Investment Group Inc. v. Carole Elkins, supra, where the panel found specifically, that the creation of a mirror website does not constitute legitimate use within the ambit of paragraph 4 of the Policy. Furthermore, the Panel finds in addition that the Respondent cannot establish any rights or legitimate interests in the Disputed Domain Names in so far as the Respondent registered the Disputed Domain Names as “Registration Private, Domains By Proxy, LLC / Hieu Nguyen” and not “AppDetex”. See further in this regard, Western Union Holdings Inc. v. Click Search, supra.

6.6 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Names as stipulated in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.7 On the question of bad faith registration and use the Panel finds that the Respondent registered the Disputed Domain Names in bad faith and has continued to engage in bad faith use. From the evidence adduced by the Complainant there are a number of weighty and irrefutable factors, which firmly establish bad faith use by the Respondent. Firstly, the Respondent’s usage of the Disputed Domain Names to redirect Internet visitors to mirror websites that are nearly identical to the Complainant’s website. The Panel finds that such activity constitutes bad faith use following Wikimedia Foundation, Inc. v. Sam He/ Attn: wikipediacn.info, supra. Secondly, the fact that the Respondent is intentionally creating confusion to Internet visitors as to the source, affiliation, and location and to the products and services offered further constitutes a disruption of the Complainant’s business. Thirdly, apart from using the Disputed Domain Names in connection with mirror websites, the fact that in the process the Disputed Domain Names are utilized to collect information from Internet visitors for the commercial benefit of the Respondent which by itself allows for the abuse of such information to the detriment of the Complainant and its clients is further evidence of bad faith use. See in this regard Digitaleo v. Charuel, SACO, supra. Fourthly, the Panel finds that the Respondent has engaged in a consistent pattern of conduct by registering the two Disputed Domain Names with the same registrar, GoDaddy.com LLC, and on the same date on January 07, 2016, which are both utilized in connection with mirror websites. Accordingly, such pattern of conduct is, further evidence of bad faith use. See in support a similar decision in Inter – Continental Hotels Corporation v. James Alex Design Factory, WIPO Case No. D2010-0974, where a respondent created two disputed domain names and was found to have established a pattern of conduct indicating bad faith use. The Panel finds the Respondent’s consistent pattern of conduct more damaging considering that there is an earlier decision where the registrar-identified-Respondent, i.e., “Hieu Nguyen” was found to have registered two disputed domain names following allegations that the Respondent had registered more than fifty domain names many of which appeared to be trade names of registered companies or other famous names. In this regard see Steamatic, Inc. v. Hieu Nguyen, supra. Fifthly, and in any event, the Panel is satisfied from the evidence on record regarding the content of the Respondent’s websites that the Respondent could not possibly have not had actual notice of the Complainant’s commercial activities, registered trademark, and registration of its own domain name. Flowing from the chronology of events, the Respondent intentionally, decided to create the two Disputed Domain Names on the same date, in January 2016, considering that the registration of the Disputed Domain Names occurred well after the Complainant was incorporated in 2012, and registered its APPDETEX trademark in February 2014. See further in this regard the decision in Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. v. M On, supra. Finally, and as alluded to in paragraph 5.5 above, the Panel has drawn adverse inferences from the failure of the Respondent to rebut the contentions of the Complainant in this proceeding.

6.8 The Panel is therefore equally satisfied that the Respondent registered the two Disputed Domain Names in bad faith and continued to engage in bad faith use.

7. Decision

7.1 For all 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, <appdetex.co> and <appdetex.net>, be transferred to the Complainant forthwith.

Ike Ehiribe
Sole Panelist
Date: September 13, 2016

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