WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eyeo GmbH v. Guttula Venkatesh, Siddharth Technologies
Case No. D2018-1054
1. The Parties
Complainant is Eyeo GmbH of Cologne, Germany, internally represented.
Respondent is Guttula Venkatesh, Siddharth Technologies of Kakinada, India.
2. The Domain Name and Registrar
The disputed domain name <getadblockplus.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2018. On May 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 May 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2018. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2018.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 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.
4. Factual Background
Complainant is owner of registrations for the word trademark and service mark (hereinafter “trademark”) ADBLOCK PLUS, including (1) on the Principal Register of the United States Patent and Trademark Office (“USPTO”), Registration No. 4,680,485, dated February 3, 2015, in international classes (ICs) 9, 38, 42 and 45, covering, inter alia, computer programs for allowing users to filter or prevent the display of advertisements on the Internet; and (2) as a European Union Trade Mark on the register of the European Union Intellectual Property Office (“EUIPO”), Registration No. 009643453, dated June 9, 2011, in ICs 9, 42 and 45, covering, inter alia, computer programs.
Complainant develops and distributes software technologies that provide Internet users with a means to block or filter advertisements from appearing as website content. This is typically accomplished through the enabling of an extension on an Internet browser. Complainant makes its extension available under the trademark ADBLOCK PLUS. Complainant operates a website at <adblockplus.org> and <adblockplus.com>, from which its extension may be installed. Complainant is principally financed by fees provided through a whitelisting initiative. Complainant’s ADBLOCK PLUS browser extension is widely used.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the disputed domain name was registered to Respondent on September 10, 2016.
Respondent has used the disputed domain name to direct Internet users to a website that has the deceptive appearance of a website operated by Complainant, including by use of Complainant’s ADBLOCK PLUS trademark, as well as Complainant’s distinctive design logo that is associated with Complainant’s extension product. Respondent’s website allows Internet users to download and install an ad-blocking software product that is not Complainant’s authorized and maintained product. There is no disclaimer of affiliation with Complainant or its product appearing on Respondent’s website.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant contends that it owns rights in the trademark ADBLOCK PLUS and that the disputed domain name is confusingly similar to that trademark.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) it is using Complainant’s well-known trademark to confuse potential consumers into falsely believing they will be downloading Complainant’s product; (2) Respondent has no plausible legitimate reason for using Complainant’s trademark, and (3) Respondent must have been aware of Complainant’s well-known trademark and product when it registered and used the disputed domain name.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and its product or service on that site; (2) Respondent’s company is not related in any way to Complainant or its trademark, and (3) there is no plausible good faith reason for Respondent to have registered and used Complainant’s trademark.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of a proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. There is no indication on the record of this proceeding that email transmission of the Complaint to Respondent encountered any difficulty. It appears that the express courier delivery service engaged by the Center was not able to deliver the Written Notice to Respondent at the address specified in its record of registration. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademark ADBLOCK PLUS, including through registration at the USPTO and EUIPO, and use in commerce. Respondent has not challenged that evidence. The Panel determines that Complainant has rights in the trademark ADBLOCK PLUS.
The disputed domain name directly incorporates Complainant’s trademark, adding the word “get” as a prefix. The word “get” refers to a means by which a person may obtain a product or service, and would be commonly associated by Internet users with identification of a place where a product or service, such as Complainant’s browser extension, could be obtained or downloaded. Respondent’s addition of the word “get” does not distinguish the disputed domain name from Complainant’s trademark from the standpoint of confusing similarity. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel determines that Complainant has established rights in the trademark ADBLOCK PLUS and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent is using the disputed domain name that is confusingly similar to Complainant’s trademark to direct Internet users to a website whose appearance conveys the impression that it is operated by Complainant, including through use of Complainant’s trademark and distinctive design logo. Respondent knew or should have known of Complainant’s trademark and product when it established its website. Respondent’s website cannot be considered a bona fide provision of goods or services prior to notice of a dispute. Furthermore, based on the available record, the Panel is not prepared to presume legitimate noncommercial or fair use in circumstances where Respondent has attempted to mislead Internet users as to the source of the product made available on its website.
Respondent’s use of the disputed domain does not on its face otherwise suggest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with [Complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location” (Policy, paragraph 4(b)(iv)).
Respondent acted deliberately to create a website that gives the impression it is operated by Complainant, and that the product made available through that website is provided by Complainant. This is sufficient to create a presumption that Respondent’s use of the disputed domain name is intended to take unfair commercial advantage of Complainant’s goodwill in its trademark. It raises the substantial possibility that Respondent will injure Internet users who rely on Complainant’s reputation by providing a substandard product that adversely affects computer systems. The Panel determines that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by registering and using the disputed domain name that is confusingly similar to Complainant’s trademark so as to create Internet user confusion as to whether Complainant is the source, sponsor, affiliate or endorser of Respondent’s website and/or product. Respondent registered and is using the disputed domain name in bad faith within the meaning 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 <getadblockplus.com>, be transferred to Complainant.
Frederick M. Abbott
Date: June 28, 2018