WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eyeo GmbH v. Sumit Kumar, Ablock Inc.
Case No. D2018-0320
1. The Parties
The Complainant is Eyeo GmbH of Cologne, Germany, internally represented.
The Respondent is Sumit Kumar, Ablock Inc. of Harrisburg, Pennsylvania, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <ablockplus.org> (“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 February 13, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 14, 2018, 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 February 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2018.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 19, 2018. 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 German company that offers online advertisement blocking software. Since 2006 it has distributed a product called Adblock Plus globally through its website. Its primary website operates from the domain name <adblockplus.org>.
The Complainant has registered trademarks that consist of the words “Adblock Plus” (the “ADBLOCK PLUS Mark”). In particular the Complainant has registered the ADBLOCK PLUS Mark as a trademark in the European Union (Registration Number 009643453, registered on June 9, 2011) and the United States (Registration Number 4680485, applied for on January 29, 2013 and registered on February 3, 2015) for goods and services including “Computer programs for allowing users to filter or prevent the display of advertisements on the Internet […]”.
The Domain Name <ablockplus.org> was registered on April 10, 2015 and resolves to a website operated by the Respondent (the “Respondent’s Website”). The Respondent’s Website appears to offer an advertisement blocking service under the name Ablock Plus in direct competition with the Complainant. No other information is available about the Respondent, including information about the creation and launch of its Ablock Plus software.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s ADBLOCK PLUS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the ADBLOCK PLUS Mark having registered the ADBLOCK PLUS Mark in the European Union and the United States. The Domain Name is confusingly similar to the ADBLOCK PLUS Mark because it simply removes the letter “d” which is not enough to avoid confusion.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is using the Domain Name to promote its own adblocker software that has a similar name to the Complainant’s Adblock Plus software, which has been globally distributed since 2006. While the Respondent is known as Ablock, there is no purpose behind the Respondent’s addition of the word “plus” to its software and domain name other than to create confusion with the Complainant. By reason of those facts the Respondent holds no rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Respondent is known as Ablock Inc. The only reason it has launched a software product (and hence registered the Domain Name <ablockplus.org>) is to take advantage of the reputation of the Complainant’s ADBLOCK PLUS Mark and Adblock Plus product for its own commercial gain. This conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
- (i) The 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 Domain Name; and
- (iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the ADBLOCK PLUS Mark, having registrations for the ADBLOCK PLUS Mark as a trademark in the European Union and United States. The Domain Name consists of the ADBLOCK PLUS Mark in its entirety minus the letter “d”. The removal of this letter does not prevent a finding of confusing similarity.
The Panel finds the Domain Name is confusingly similar to the Complainant’s ADBLOCK PLUS Mark. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 trademark 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 trademark or service mark at issue.”
The Respondent’s Website appears to be the website of a company offering a software product under the same name as the Domain Name, being Ablock Plus. The Panel finds that the Respondent is using the Domain Name in connection with the offering of a good or service; the question is whether this is to be considered a bona fide offering.
This case is similar to the case of Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052, involving the domain name <optiononelending.com>. In that case the then respondent was offering mortgage lending services under the name “Option One” which was the then complainant’s name and was a registered trademark for precisely the services that the then respondent sought to offer. When considering whether this demonstrated rights or legitimate interests the Panel said:
“As advertised on Complainant’s and Respondent’s websites, both businesses offer their mortgage lending services to residents in Southern California. It is undisputed that Complainant and Respondent operate in the same field. Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use pursuant to Policy. See […] Chip Merch, Inc. v. Blue Star Elec., WIPO Case No. D2000-0474 (August 21, 2000) (finding the disputed domain names confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).”
In the present case the parties operate in precisely the same field and offer overlapping software products. The Respondent has registered a Domain Name that is very similar to the name of the Complainant’s software product which has been sold since 2006. Prior to the date the Domain Name was registered, the Complainant registered the ADBLOCK PLUS Mark as a trademark in the United States, the location of the Respondent, for the goods and services that the Respondent offers. In summary, the Respondent is using the Domain Name to offer a seemingly identical product under an almost identical name to that of the Complainant and is therefore in direct competition with the latter. Such use does not give rise to rights or legitimate interests in the Domain Name.
The Respondent has had the opportunity to provide any explanation for its conduct including an explanation for it adopting the Ablock Plus name for its software, but has chosen not to submit any such response. In the absence of any explanation of the Respondent’s conduct, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in the Domain Name under the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, 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:
(i) circumstances indicating that the Respondent has registered or has 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 trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the ADBLOCK PLUS Mark at the time the Respondent registered the Domain Name. The Complainant has been offering its Adblock Plus software since 2006; the Respondent is also offering ad blocking software; it is implausible that it would not have any awareness of the Complainant at the time it registered the Domain Name. Moreover the Panel accepts the Complainant’s submission that it would be very unusual for the Respondent to use the word “plus” as part of the name of its software unless it had knowledge of the Complainant and sought to take advantage of any confusion between the Respondent and the Complainant’s ADBLOCK PLUS Mark.
The Respondent’s Website offers a software product that competes directly with the Complainant. It does so under a name that is almost identical to the name of the Complainant’s Adblock Plus software and ADBLOCK PLUS Mark. In these circumstances where the Respondent has offered no explanation for the registration of the Domain Name the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the ADBLOCK PLUS Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. As such the Panel finds that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name, <ablockplus.org> be transferred to the Complainant.
Date: March 22, 2018