WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citrix System, Inc. v. Sampath M.
Case No. D2016-2426
1. The Parties
The Complainant is Citrix System, Inc. of Fort Lauderdale, Florida, United States of America ("United States"), represented by Archer & Angel, India.
The Respondent is Sampath M. of Hyderabad, Telangana, India.
2. The Domain Name and Registrar
The disputed domain name <citrixinfosolutions.com> 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 December 1, 2016. On December 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 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 December 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2017.
The Center appointed Jane Lambert as the sole panelist in this matter on January 13, 2017. 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 the holding company of a group of companies that supply server, application and desktop virtualization, networking, software as a service, and cloud computing technologies. It is based in Fort Lauderdale, Florida and Santa Clara, California, with subsidiary operations in California and Massachusetts, and additional development centers in Australia, Canada, Denmark, Germany, India, and the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). It currently services around 330,000 customers around the worldwide. The Complainant reported USD 3.28 billion in revenue and a net income of more than USD 300 million in 2015. In December 2015, it employed approximately 9,500 persons.
The Complainant has registered CITRIX simpliciter or in combination with other words or devices as a trade mark for various goods and services in the United States and other countries around the world. For example, the Complainant has registered the word "CITRIX" as a trade mark in the United Kingdom for computer programs and computer software in Class 9 under registration number UK1455740 with effect from February 13, 1991.
The Complainant and its subsidiary companies have advertised, marketed and supplied goods and services by reference to the CITRIX mark in all its markets. By reason of such sales, marketing and advertising consumers of those goods and services around the world associate the mark CITRIX with the Complainant and none other.
The disputed domain name was registered on Oct 19, 2015. Upon carrying out enquiries in August 2016, the Complainant found that a second technical contact was a company called Citrix Infosolutions (OPC) Private Ltd. of Hyderabad, Telengana, India and that a third technical contact was one Mohd. Kaleemuddin, who is described as a director of that company. The Complainant obtained a company search, a copy of which is appended to the Complaint marked "I". It identifies one Mohd. Kaleemuddin as the sole shareholder and director of that company.
Representatives of the Complainant contacted the company and spoke to a person who identified himself as Mr. Kaleemuddin and confirmed he was a director of the company. Mr. Kaleemuddin gave the representatives his business card which is exhibited to the Complaint marked "F". The card describes Mr. Kaleemuddin as the company's managing director and states that his email address is "[m.k.] @citrixinfolutions.com". In a conversation with the Complainant's representatives, Mr. Kaleemuddin said that his company had a website at "citrixinfosolutions.com" and that he had used it for almost a year.
The Complainant's representatives subsequently visited that Internet address and found that it had been used as a website for a business called Citrix Infosolutions that offered corporate training. Screen shots of those pages are exhibited to the Complaint marked "G".
In the last sentence of paragraph 10.B.3 of the Complaint, the Complainant writes: "For the purpose of this Complaint, Citrix Infosolutions (OPC) Private Limited and the Respondent is hereinafter collectively referred to as 'Respondent'." Mr. Kaleemuddin does not appear to have admitted that Sampath M. and the company are connected and there does not appear to be any other evidence on the issue.
The Complainant's lawyers sent a letter that they describe as "a cease and desist notice" to the company on May 31, 2016 (a copy of which is exhibited marked "H1"). They complain that they received no reply up to the filing of this Complaint.
5. Parties' Contentions
The Complainant requests the transfer of the disputed domain name on the grounds that it is confusingly similar to trade marks in which the Complainant has rights, the Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name has been registered and is being used in bad faith.
In support of its first contention, the Complainant refers to its uninterrupted use of the CITRIX mark since its formation in 1989 and to its registration of many domain names that include the word "CITRIX" in the registration and, in particular, to its registration of the domain name <citrix.com> in 1994. It submits that the dominant component of the disputed domain name is its trade mark CITRIX and that the word "infosolutions" is an abbreviation for "information processing" and "solutions" which is the business of the Complainant. Such combination was chosen to mislead the public into believing that any website using the disputed domain name was somehow connected with the Complainant.
As for the second, the Complainant states that it has never authorized, licensed or otherwise allowed the above-mentioned Citrix Infosolutions (OPC) Private Ltd. to carry on business in that corporate name or style and that it has never allowed that company or anyone else to register the disputed domain name. Carrying on business in a name or style that is similar to the Complainants is actionable under Indian law so. For that reason it cannot argue that its corporate name is similar to the disputed domain name. None of the circumstances set out in paragraph 4 (c) of the Policy apply to this case.
With regard to its third contention, the Complainant says that the mere registration of a domain name comprising the Complainant's trade mark and an abbreviation of words that describe the Complainant's business is inherently deceitful and thus "registration in bad faith" that the use of such a domain name is by its very nature "use in bad faith". Further or alternatively, the use of the domain name as an URL for its website would fall full square within paragraph 4(b)(iv) of the Policy. Further or in the further alternative the Complainant says that the registration of a mark in India is an act of bad faith as are the immediate removal of the website upon receiving the letter before claim and the failure to respond to the crease-and-desist notice.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The first question for the Panel is whether the right parties have been joined. Sampath M. of Hyderabad, Telangana, India is named as the Respondent in paragraph 6 of the Complaint but nearly all the evidence relates to Citrix Infosolutions (OPC) Private Ltd. of Hyderabad, Telengana, India and Mr. Mohd. Kaleemuddin.
It would have been helpful had the Complainant named the company as the second Respondent inthe Complaint. It would have been even more helpful if the Complainant could have found out whether Sampath M. actually exists or simply a ruse to throw the Complainant and any tribunal that might have to decide this matter off the scent. If Sampath M. does exist, it would have been useful to know whether that person is a nominee or trustee for the company or simply Mr. Kaleemuddin's alias. That is the sort of information that enquiry agents can usually find out quite easily.
In the absence of any such information, a panel has to do the best it can with the evidence before it. It appears from the screen shots marked "G" that the disputed domain name was used as a website for the above-named Citrix Infosolutions (OPC) Private Ltd. It follows that the company benefited from the registration and use of the disputed domain name. That company has also been identified as one of the technical contacts together with GoDaddy.com and Mr. Kaleemuddin. It has had notice of this dispute both in the form of the cease-and-desist notice from the Complainant's lawyers and the Center's notification of this proceeding. It would be unjust and reflect badly on the Policy were this Complaint to be defeated by the use of a nominee or alias or the nomination of a fictitious person by the user of the website. The Panel holds that the company and its managing director Mr. Kaleemuddin together with the above mentioned Sampath M. have been properly joined to these proceedings.
Turning to the main issue, paragraph 4(a) of the Policy provides:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a 'complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present."
A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.
First, the registration of CITRIX as a trade mark in the United Kingdom mentioned above is undoubtedly a trade mark in which the Complainant has rights.
Secondly, the disputed domain name incorporates that trade mark as the dominant component which is enough to make the disputed domain name similar to a trade mark in which the Complainant has rights.
Lastly, the combination of that trade mark with the word "infosolutions" which will be read by the public an abbreviation for the words "information processing solutions" renders the disputed domain name "confusingly similar". That is because the Complainant's business includes supplying information processing solutions. It is probably intended, and certainly has the effect, of inducing members of the public to visit Mr. Kaleemuddin's site in the belief that they were visiting the Complainant's.
B. Rights or Legitimate Interests
The Panel finds the second element to be present.
India is a Commonwealth common law country with a legal system similar to that of England and Wales. Carrying on an information technology business including under the CITRIX name or mark would amount to passing off in any such country and probably unfair competition elsewhere. The Respondent would require the Complainant's license to use such trade mark lawfully and the Complainant has made it clear beyond peradventure in its Complaint that it has never granted such a license. A respondent cannot claim to have a right or interest in a disputed domain name that is similar to a corporate name that the Respondent cannot lawfully use.
Moreover, even read in the most generous light, none of the Policy elements are met in the Respondent's favor as to rights or legitimate interests.
C. Registered and Used in Bad Faith
The Panel concludes that the third element is present.
As the Complainant properly points out, paragraph 4(b) of the Policy provides:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith."
One of those circumstances is provided by sub-paragraph (iv):
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Panel has already found the disputed domain name to be confusingly similar to the Complainant's trade mark. The disputed domain name was used as a URL for a website that marketed information technology services such as training for which the Mr. Kaleemuddin's company would have expected payment. That satisfies the requirement of an intentional attempt to attract Internet users to the Respondent's website for commercial gain. Such users would have expected such services to be offered by the Complainant. Thus, all the requirements of paragraph 4(b)(iv) of the Policy are satisfied.
Having found one of those circumstances to be present, the Panel has to treat it as evidence of registration and use in bad faith. There being no contrary evidence, the Panel must find that the disputed domain name was registered and was at the day of the Complaint used in bad faith.
Although it is not necessary to consider the Complainant's other submissions, the Panel observes that the words "without limitation" mean that evidence of registration and use in bad faith can be found in other circumstances. The disputed domain name was used to pass off Mr. Kaleemuddin's company and its business as and for those of the Complainant's. The Panel adds that it would find the third element to be present on that ground if it were wrong on paragraph 4(b)(iv) 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, <citrixinfosolutions.com>, be transferred to the Complainant.
Date: January 26, 2017