WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citrix Systems, Inc. v. Citrix, Citrix IT Systems
Case No. D2018-0565
1. The Parties
The Complainant is Citrix Systems, Inc. of Fort Lauderdale, Florida, United States of America ("USA"), represented by Sujata Chaudhri IP Attorneys, India.
The Respondent is Citrix, Citrix IT Systems of Coimbatore, Tamil Nadu, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <citrixitsys.com> (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 15, 2018. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied on March 16, 2018, confirming that it had received a copy of the Complaint, that the Domain Name is registered with it, that the Respondent is the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applies, that the Domain Name was registered on December 7, 2017 and expires on December 7, 2018, that a Registrar Lock has been applied and will be maintained until expiry, and that the language of the registration agreement is English. The Registrar also provided the full contact details for the Domain Name held on its WhoIs database.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2018. On March 31, 2018, the Respondent sent emails to the Center stating "We are suspend/remove that website citrixitsys.com". The Center informed the parties on April 4, 2018, that the proceeding could be suspended to implement a settlement agreement between them; that if they wished to explore settlement options, the Complainant should submit a request for suspension by April 9, 2018; and that if no such request was received the proceedings would continue.
The Complainant did not submit any request for suspension.
In accordance with paragraph 5 of the Rules, the due date for Response was April 11, 2018. The Respondent did not submit any Response to the Center other than the emails mentioned above.
Following the Respondent's emails of April 4, 2018, mentioned above, the Complainant wrote to the Respondent "without prejudice" on April 5, 2018, and the Respondent replied on April 12, 2018. The Complainant subsequently filed an unsolicited supplemental submission on April 17, 2018, referring to the Respondent's reply.
The Center appointed Jonathan Turner as the sole panelist in this matter on April 20, 2018. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent, and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Procedural Ruling
Whether a Panel should take into account a reply to a "without prejudice" communication when it is relied upon by the party who initiated the "without prejudice" correspondence is a controversial issue: see, for example, Amazon.com, Inc., Amazon Technologies, Inc., Amazon Europe Holding Technologies SCS v. Safraaz Karim, WIPO Case No. D2016-0809. In any case, the Panel has a discretion as to whether to admit unsolicited supplemental submissions. The Panel finds it unnecessary to consider the Complainant's supplemental submission in order to reach a decision in this case. In the circumstances, the Panel decides not to admit the Complainant's supplemental filing.
5. Factual Background
The Complainant is the holding company of a group of companies providing computer networking software and services. The group was founded 29 years ago in the USA and is now a leading provider of these products and services. The group's products and services are used by over 400,000 organizations and over 100 million users around the world. In 2016 the group's revenue was USD 3.41 billion.
CITRIX has been used by the Complainant and its subsidiaries as part of their corporate names since the group was founded in 1989. The Complainant has registered CITRIX as a trademark in numerous jurisdictions, including a registration in India dated March 16, 1995 under No. 659012. The Complainant and its affiliates have also registered various domain names comprising "citrix" as the second level domain, including <citrix.com>, <citrixsystems.org> and <citrix.in>, registered in 1994, 2002 and 2005 respectively.
The Domain Name was registered by the Respondent on December 7, 2017, and directed to a web page promoting services and solutions relating to computer networks. The Complainant sent the Respondent a cease and desist letter on January 4 and a reminder on January 12, 2018. The Respondent replied on January 23, 2018 stating that it would contact the Complainant, but did not do so before the Complaint was filed on March 15, 2018.
6. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to the mark CITRIX in which it has statutory and common law rights in India and other countries around the world. The Complainant points out that the Domain Name includes its mark in its entirety together with the abbreviations "it" and "sys", which are descriptive of the Complainant's business and do nothing to distinguish the Domain Name from its mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant points out that the Domain Name was registered nearly 29 years after the Complainant commenced using its CITRIX mark worldwide. The Complainant considers that the Respondent must have been aware of its rights in the mark since it purports to be in the same business. According to the Complainant, the Respondent's landing page demonstrates that it is merely holding the Domain Name and is engaged in a planned campaign to misappropriate the Complainant's CITRIX mark. The Complainant adds that the Respondent is not commonly known by the Domain Name.
The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant reiterates that the Respondent must have been aware of the Complainant's CITRIX mark when it chose and registered the Domain Name, and evidently chose it because it is confusingly similar to that mark with the intention of capitalizing on that confusion. The Complainant states that there has been no active use of the Domain Name since its registration and adds that the Respondent's use of the Domain Name is bound to lead to confusion. The Complainant also draws attention to the Respondent's failure to respond to its cease and desist letter.
The Complainant requests a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not provide any substantive response to the Complaint.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is convenient to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent's default in failing to file a substantive response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the mark CITRIX.
The Panel is also satisfied that the Domain Name is confusingly similar to this mark. As the Complainant rightly points out, the Domain Name consists of this mark in its entirety followed by the abbreviations "it" and "sys", which are descriptive of the Complainant's business, and the generic Top-Level Domain ("gTLD") ".com". These additions do not distinguish the Domain Name from the Complainant's mark.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel considers that any offering of goods or services by the Respondent using the Domain Name has not been bona fide, but rather has been a use of the Domain Name in bad faith to mislead potential customers into supposing that the Respondent is part of the Complainant's group of companies by the confusing similarity of the Domain Name to the Complainant's long-established and distinctive mark.
The Panel is also satisfied that the Respondent is not commonly known by the Domain Name or any corresponding name and that it is not making legitimate noncommercial or fair use of the domain name. On the contrary, any use of the Domain Name by the Respondent has been with intent to divert potential customers for commercial gain by misleading them into believing that the Respondent is part of the Complainant's group.
None of the circumstances mentioned in paragraph 4(c) of the UDRP as demonstrating rights or legitimate interests in a domain name is present. Nor is there any other basis disclosed by the evidence on which the Respondent could claim any rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has used the Domain Name intentionally to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or of products promoted on it.
Even if the Respondent has not yet started trading, the posting of the web page is itself a use of the Domain Name. Furthermore, the intention to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's mark is evident from the confusing similarity of the Domain Name to the Complainant's long-established and distinctive mark, the similarity of the services promoted on the Respondent's web page to the Complainant's business, and the style and content of the page, such as the claim that the Respondent's clientele includes leading multinational businesses.
In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence of registration and use of the Domain Name in bad faith. There is no evidence displacing this presumption. The Panel therefore concludes that the Domain Name was registered and is being used in bad faith.
All three substantive requirements of the UDRP are satisfied and it is appropriate to direct that the Domain Name be transferred to the Complainant.
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 <citrixitsys.com> be transferred to the Complainant.
Date: May 4, 2018