WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HT S.R.L. (formerly Hacking Team S.r.l.) v. Domains By Proxy, LLC / Mordechai Weissbrot
Case No. D2018-0710
1. The Parties
The Complainant is HT S.R.L. (formerly Hacking Team S.r.l.) of Milan, Italy, represented by De Berti Jacchia Franchini Forlani, Italy.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Mordechai Weissbrot of Caesarea, Israel, represented by Steven Rinehart, United States.
2. The Domain Name and Registrar
The disputed domain name <thehackingteam.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 March 29, 2018. On March 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 5, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 6, 2018. On April 9, 2018, the Complainant filed a second amended Complaint.
The Center verified that the Complaint together with the amended Complaint and second amended 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 April 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2018. The Respondent transmitted communications to the Center on April 4 and April 9, 2018. The Response was filed with the Center on April 30, 2018.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 18, 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.
On May 23, 2018, the Center received an unsolicited Supplemental Filing from the Complainant.
4. Factual Background
The Complainant is engaged in the provision of software to government authorities and law enforcement agencies intended for the legal interception of communications and data for security purposes. The Complainant owns the following trademark:
HACKINGTEAM, stylised and with additional symbols, international trademark, registered November 11, 2011, registration number 1105212, classes 9, 16 and 42.
The Complainant also owns the domain names <hackingteam.it>, registered in 2003, and <hackingteam.com>, registered in 2009.
The Respondent provides news about hacking to groups of hackers. The disputed domain name was registered on September 19, 2017, and has resolved to website pages offering news, information, facilities and services to people with interests in cryptocurrencies, the hacking of email systems, of mobile applications, of personal computers, and kindred matters.
5. Parties’ Contentions
The Complainant’s contentions may be summarised as follows.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. It says there has been actual confusion resulting in a lawyer’s letter to the Complainant on behalf of another party complaining about material appearing on the website of the disputed domain name, which the other party attributed to the Complainant.
The Complainant says the Respondent has no rights or legitimate interest in respect of the disputed domain name. The Respondent has never been granted any right to use the Complainant’s trademark or to register a domain name incorporating that trademark. The Complainant says the Respondent has not been commonly known as “Hacking Team”.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The corresponding website displays several reproductions of the Complainant’s trademark. The website has variously promoted subscription to an Initial Coin Offering; an allegedly defamatory article pertaining to the cryptocurrency market and blockchain technology; and services of hacking and cyber investigations. The website has also facilitated redirection of visitors to a third party website offering cyber investigations, connected by clicking on a logo identical to the Complainant’s trademark. The Complainant says the disputed domain name has been registered and used in bad faith by intending to attract visitors for commercial gain by confusion with the Complainant’s trademark.
The Complainant requests the transfer of the disputed domain name.
The main points of the Respondent’s extensive contentions may be summarised as follows.
The Respondent denies the Complaint and says it is a case of Reverse Domain Name Hijacking (“RDNH”).
The Respondent says it registered the disputed domain name as being descriptive. Its purpose is to provide news to hackers, particularly in relation to cryptocurrency and blockchain.
The Respondent contends that the Complainant’s trademark as filed at the United States Patent and Trademark Office (“USPTO”) contains the disclaimer “No claim is made to the exclusive right to use ‘Hacking Team’ apart from the mark as shown”. The Complainant has no rights, registered or common law, in a trademark that the Complainant has disclaimed and which, the Respondent says, was found to be descriptive by the USPTO.
The Respondent says that the Complainant has not shown on the evidence that the Respondent was clearly aware of the Complainant’s product, or that the clear aim of the Respondent’s registration was to take advantage of confusion between the disputed domain name and the Complainant’s rights.
The Respondent says the disputed domain name was registered in good faith and denies that it was registered for any of the purposes exemplified under paragraph 4(b) of the Policy.
The Respondent submits that a registered trademark provides no rights under the Policy if found to be descriptive or generic. The disputed domain name comprises common descriptive words and its use by the Respondent is in connection with a bona fide provision of goods or services.
The Respondent refers to the Lanham Act (United States) and submits that a descriptive trademark is only protected if it has acquired secondary meaning, whereas a generic mark is not protected since it would grant a monopoly over the use of the word.
The Respondent submits that the Complainant has failed to prove its case, for example, that there is no sufficient prima facia case to shift the “burden of proof” of rights and legitimate interests on to the Respondent and no assertion of the registration date of the disputed domain name.
The Respondent asks for a finding of RDNH.
The Respondent has cited and quoted from a number of previous decisions under the Policy that it considers to support its position.
6. Discussion and Findings
A. Procedural Matters
The Complaint initially named Domains By Proxy, LLC as the Respondent. After the Registrar disclosed the details provided by the underlying registrant, the Complainant produced an Amended Complaint that named Mordechai Weissbrot to be the Respondent. The Complainant stated in accompanying correspondence that “we have not been able to verify the real identity of the Registrant” and would consider Domains By Proxy to be an alternative Respondent.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, 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”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
An unsolicited Supplemental Filing was submitted by the Complainant on May 23, 2018. The Panel has sole discretion to request further statements or documents from either of the Parties (Rules, paragraph 12). The Panel is expected to ensure that proceedings under the Policy takes place with “due expedition” (Rules, paragraph 10(c)). It cannot be stressed too highly that neither the Complainant nor the Respondent may reserve evidence and expect the Panel to request it. As observed by the panelist in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703: “A Complainant should ‘get it right’ the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone. There is no right of reply under the Rules.” See also CAM London Limited and Comgest Asset Management International Limited v. Cam LondonLtd, WIPO Case No. D2013-2190; Tufco Technologies, Inc., Tufco LP, Hamco Manufacturing and Distributing LLC v. Hamco Alabama, LLC, WIPO Case No. D2011-1451.
The Supplemental Filing was not requested by the Panel, was not required, and was essentially reiterative of the Complaint. It is not admitted to the proceeding. Correspondingly the Respondent is not granted a right of reply.
B. Identical or Confusingly Similar
The Complainant has produced a copy of the registration record in the WIPO Madrid Monitor of International Trademarks showing it to be the owner of the trademark HACKINGTEAM. A determination of identity or confusing similarity under paragraph 4(a) of the Policy requires only an objective comparison of the disputed domain name with the trademark. The disputed domain name is <thehackingteam.com>, of which the generic Top-Level Domain (“gTLD”) “.com” may be disregarded. What remains is “thehackingteam”, which differs from the Complainant’s trademark, within the limited character set available for a “.com” domain name, only by the generic prefix “the”, which the Panel finds not to be distinguishing. Accordingly the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark and finds for the Complainant under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has made a prima facie assertion to the effect that the Respondent has no rights or legitimate interest in respect of the disputed domain name and has never been granted any right to use the Complainant’s trademark.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(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 claims to be using the disputed domain name for its business in the provision of news to hackers, especially in relation to cryptocurrencies and blockchain technology. The Respondent claims the right to use the disputed domain name on the basis that it is descriptive. The Respondent submits that the disputed domain name does not conflict with the Complainant’s trademark because the trademark is itself descriptive and the registration document issued by the USPTO carries the disclaimer “No claim is made to the exclusive right to use ‘Hacking Team’ apart from the mark as shown”.
The question to be explored is whether the Respondent’s use of the disputed domain name in connection with an offering of goods or services, in the terms of paragraph 4(c)(i) of the Policy, satisfies the essential ingredient of being bona fide. That in turn requires an examination of whether the Respondent’s registration and use of the disputed domain name were in bad faith. The Panel will then return to the question of rights or legitimate interests, but notes for the reasons stated below, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
The Complainant has to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 trademark 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 trademark 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 on-line 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 provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel. In this instance paragraph 4(b)(iv) of the Policy is particularly relevant.
The Respondent has made much of the descriptiveness of the Complainant’s trademark. According to the international trademark registration document produced by the Complainant, the trademark is composed of ordinary keyboard characters in approximately the following form:
That is, the word “Hacking” with a leading capital letter, and the right square open-bracket, are in light density or grey type; the word “Team” with a leading capital letter, and the left square close-bracket, are in bold type, all characters being in a sans-serif typeface. The international trademark registration document classifies the figurative elements of the trademark as 24.17.25 (other signs, notations or symbols) and 27.05.01 (letters presenting a special form of writing) with reference to the International Classification of the Figurative Elements of Marks (Vienna Classification) – VCL(6).
The description of the trademark provided in the USPTO online registration record is: “Color is not claimed as a feature of the mark. The mark consists of the wording ‘HackingTeam’ in stylized type surrounded by open brackets. The word ‘Team’ and the left bracket are in bold type”.
The Complainant’s trademark is thus a sequence of ordinary keyboard characters arranged as a logo.
Screen captures of pages from the website of the disputed domain name, one of which incorporates its own date of March 12, 2018, have been produced in evidence by the Complainant. The Complainant’s trademark logo in the form ]HackingTeam[, notably not including the word “the” that appears in the disputed domain name and the Respondent’s name and website URL, but inclusive of the left bold square bracket and right light square bracket, and of the word “Hacking” in light type and the word “Team” in bold type, appears in whole or in part in several places including around an apparent bundle of USD 100 notes (with vestigial square brackets), and on several pictures of monitor screens above legends such as “How to Remove Negative News and Newspaper Articles from the Internet”. One of the reproduced trademark logos provides a link to a third party website that has the headings “Email Hacking Services”, “Mobile Apps Hacking” and “PC and Tablet Hacking”.
In the exercise of its power to consult certain publicly available information (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.8) the Panel has visited the Complainant’s website “www.hackingteam.com” and has viewed the Complainant’s trademark logo displayed prominently there in the form ]HackingTeam[. The Panel finds that the Complainant’s trademark logo as displayed on its own website is reproduced repeatedly on the Respondent’s website in as close to an exact copy as is reasonably achievable and finds it inconceivable therefore that the Respondent was not clearly aware of the Complainant or its trademark.
Thus, the Panel concludes that the Respondent has intended that visitors to its website at the disputed domain name will be confronted with a distinctive trademark logo indistinguishable from that registered by the Complainant in 2011.
The Complainant has produced evidence of actual confusion in the form of an urgent and strongly worded letter dated January 26, 2018, from a Hong Kong law firm to the Complainant concerning an allegedly defamatory article that appeared on the Respondent’s website at the disputed domain name, about a proprietary cryptocurrency. After the Complainant disclaimed responsibility for the article and for the Respondent’s website, the Hong Kong law firm replied in subsequent correspondence to say, among other things, “The website [i.e., the Respondent’s website at the disputed domain name] on which the Article was published [...] bears the image of your client’s brand [i.e., the Complainant’s brand]”, and “In the circumstances, we are unable to distinguish your client from association with the subject defamatory Article, unless there is any other evidence to the contrary”.
In the terms of paragraph 4(b)(iv) of the Policy, on the evidence and on the balance of probabilities, the Panel finds the Respondent to have created the disputed domain name and used it for intended commercial gain, with the intention that visitors to the corresponding website will be confused at least initially into believing it to belong to or to be endorsed by the Complainant. Accordingly the Panel finds the disputed domain name to have been registered and used in bad faith under paragraph 4(a)(iii) of the Policy.
The question of whether the Respondent has rights or legitimate interests in the disputed domain name may now be revisited.
In certain circumstances a domain name and a similar trademark belonging to another entity may co-exist innocently in different or even in similar areas of business, particularly where the key words are generic or descriptive. The Policy is not concerned with trademark infringement per se or with conflict between trademarks, matters of which belong in another forum, but is concerned with conflict between a domain name and a trademark where there is abusive registration and use of the domain name. Whilst it might be argued that a particular descriptive or generic domain name has been registered and used innocently, that argument is negated if there is clear evidence that the domain name has not been registered and used in a descriptive or generic sense but in a trademark sense with intent to target a trademark owner.
The disputed domain name has been found to have been registered and used in order to target specifically the Complainant by reproducing its distinctive trademark logo, and therefore to have been registered and used in a trademark sense and in bad faith. Consequently any use of the disputed domain name for an offering of goods or services cannot be considered bona fide within the contemplation of paragraph 4(c)(i) of the Policy and, in the circumstances, the Respondent is found not to have been commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy. The use of the disputed domain name is found not to be noncommercial or fair within the definition of paragraph 4(c)(iii) of the Policy. Accordingly, on the evidence and on the balance of probabilities, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
E. Reverse Domain Name Hijacking
The Complainant having prevailed, the question of RDNH does not arise.
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 <thehackingteam.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: May 30, 2018