WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Malwarebytes Inc. v. Radhe Shyam

Case No. D2016-1596

1. The Parties

The Complainant is Malwarebytes Inc. of Santa Clara, United States of America, represented internally.

The Respondent is Radhe Shyam of Assam, India.

2. The Domain Name and Registrar

The disputed domain name <malwarebytes-support.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2016. On August 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 8, 2016, 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 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2016.

The Center appointed David Taylor as the sole panelist in this matter on September 5, 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

The Complainant, Malwarebytes Inc., is in the business of creating and distributing security software since at least 2005. As its primary website the Complainant operates “www.malwarebytes.org” and “www.malwarebytes.com” since at least 2005. The Complainant is the owner of United States trade mark registration No. 3725149 for MALWAREBYTES, in connection with “downloadable computer software for identifying and removing malware” (class 9), registered on December 15, 2009.

The Respondent is an individual residing in India. No other information about the Respondent is known.

The Domain Name was registered on January 13, 2016. It is resolving to a website mirroring the “look and feel” of the Complainant’s website and offering technical support services “for all the major vendors and third party products”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s trade mark as it incorporates both its company name and trade mark in their entirety. The Complainant argues that simply adding “-support” does not distinguish the Domain Name from the Complainant. Instead, the Complainant argues that the Respondent is using the Domain Name to create the false impression that the Respondent is associated with Complainant, or that the services being sold are authentic. The Complainant states that given the widespread use of the Complainant’s name and notoriety in connection with security software (with over 500 million downloads), it is probable that a majority of Internet users will assume that the Domain Name is owned, controlled or endorsed by the Complainant.

The Complainant further contends that the Respondent cannot establish any rights or legitimate interest in the Domain Name. It states that there exists no relationship between the Complainant and Respondent that give rise to any license, permission, or authorization by which the Respondent could own or use the Domain Name. The Respondent is not commonly known by the Domain Name, as shown in the WhoIs record. The Complainant contends that the Respondent currently redirects users to a website inviting visitors to call its technical support, which is said to support “all the major vendors and third party products”. The Complainant argues that the only reason the Respondent sought to register and use the Domain Name is to offer for sale an unauthorized service and otherwise profit from the consumer confusion resulting from the Respondent’s use of Complainant’s mark.

The Complainant also asserts that the Respondent is commercially exploiting the Domain Name and the Complaint’s trade mark for its own gain. The website to which the Domain Name is pointing offers technical services and incorporates the Complaint’s trade dress. In the Complainant’s view, the only reason for the Respondent’s use of the Domain Name is to confuse consumers into believing that the services offered on the associated website are authorized by the Complainant. The Complainant argues that the Respondent’s services are not legitimate and so given this, the Respondent’s use of the Domain Name is clearly in bad faith. The Complainant also argues that the Respondent is using the goodwill and reputation of the Complainant’s name and trade mark in bad faith in order to improperly benefit the Respondent financially in violation of the applicable trade mark and unfair competition laws. Moreover, the Complainant argues that the Respondent’s activities demonstrate bad faith registration and use, in violation of the Policy as set forth in paragraphs 4(b)(i) and 4(b)(ii).

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition decision in favour of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See paragraph 4.6 of the (“WIPO Overview 2.0”).

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence that it has registered trade mark rights in MALWAREBYTES in connection with security software. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. The Domain Name incorporates the Complainant’s MALWAREBYTES trade mark in its entirety with the addition of the term “support”, separated by a hyphen. Prior panels deciding under the Policy have held that “when a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish identity or confusing similarity for purposes of the Policy”. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. The addition of the term “-support” or the presence of a hyphen does nothing to diminish the confusing similarity with the Complainant’s trade mark. On the contrary, the term “support” actually reinforces the confusing similarity with the Complainant’s trade mark as it is a term strongly related with the Complainant’s services.

The generic Top Level Domain (“gTLD”) “.com” is generally disregarded under the identity or confusing similarity test as it is a functional element. See paragraph 1.2 of the WIPO Overview 2.0.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark.

The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See paragraph 2.1 of the WIPO Overview 2.0.

The Complainant has asserted that the Respondent is not sponsored by nor affiliated in any way with the Complainant and nor has it been authorised by the Complainant to make any use of its MALWAREBYTES trade mark. There is no evidence that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.

The Respondent’s use of the Domain Name, which is confusingly similar to the Complainant’s trade mark, to resolve to a website reproducing the Complainant’s trade dress and offering technical services “for all the major vendors and third party products” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy, as the Respondent is misrepresenting himself as the Complainant in order to unduly take advantage of the Complainant’s rights for his own financial gain by misleading Internet users as to the source or affiliation of the associated website.

The Panel notes that the Respondent’s website displays a disclaimer which provides that “Malwarebytes Support is a total independent and completely autonomous technical service provider. We provide technical support for all the major vendors and third party products. The third party trade marks, logos, names of the brands and the products have been given for information purpose only and we in no means are advocating any affiliation or connection to any of the product or brand”. However, prior panels deciding under the Policy have held that the presence of a disclaimer does not cure the initial and illegitimate diversion caused by the domain name itself. See Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 (“The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion”) and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (“Having attracted Internet traffic to his site by trickery, the Respondent cannot resort to disclaimers at the Website...”). Furthermore, given the nature of the website to which the Domain Name is pointing, which reproduces the “look and feel” of the Complainant’s website, such a disclaimer under these circumstances is unlikely to remove any confusion in the mind of the Internet user visiting the website. See also paragraph 3.5 of the WIPO Overview 2.0.

The Complainant has therefore made a prima facie case of the Respondent’s lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut such a showing.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

“(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 trade mark 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 trade mark 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 web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel finds that the Respondent registered the Domain Name in bad faith. The Complainant’s MALWAREBYTES trade mark not only significantly predates the registration date of the Domain Name, but also enjoys considerable renown in connection with anti-malware software. It therefore seems likely that the Respondent had knowledge of the Complainant’s rights at the time of registration of the Domain Name and that he did so seeking to take advantage of such rights. This is strongly supported by the Respondent’s subsequent use of the Domain Name to resolve to a website mirroring the “look and feel” of the Complainant’s website (in particular its distinctive blue and white colour scheme) and offering services that are clearly commercial in nature and from which the Respondent is no doubt obtaining financial gain. See Burlington Networks Inc. v. Igor Sashin, WIPO Case No. D2005-1036.

The Panel also finds that by using the Domain Name to resolve to a website mirroring the “look and feel” of the Complainant’s website to offer technical services that are clearly commercial in nature, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of the services provided on the website, in accordance with paragraph 4(b)(iv) of the Policy. The Panel is of the view that the presence of a disclaimer on the website does not cure the Respondent’s bad faith, given the overall circumstances of this case and in particular the nature of the website to which the Domain Name is resolving, as discussed above. See paragraph 3.5 of the WIPO Overview 2.0. The Panel also draws an adverse inference from the Respondent’s failure to take part in the present proceedings.

The Panel therefore finds that the Domain Name was registered and is being used in bad faith.

The Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.

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 Domain Name, <malwarebytes-support.com>, be transferred to the Complainant.

David Taylor
Sole Panelist
Date: September 19, 2016