WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Splunk Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Elisa Steele, splunkaus
Case No. D2019-0167
1. The Parties
The Complainant is Splunk Inc. of San Francisco, California, United States of America (“United States”), represented by Chestek Legal, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States / Elisa Steele, splunkaus, of North Sydney, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <splunkaus.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 January 24, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2019, 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 January 25, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 29, 2019.
The Center verified that the Complaint, together with the 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 January 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on February 21, 2019. 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’s business comprises the supply of software that analyses different types of data for a variety of commercial purposes. It trades as SPLUNK. The first trade mark it registered to protect its trading style was United States Service Mark No. 3,269,249 for SPLUNK, in classes 9,16,35,38, and 42, registered on July 24, 2007. Since then the Complainant has registered its SPLUNK trade mark in numerous countries around the world. It also operates a website at “www.splunk.com”, which provides information about its software products and services.
The disputed domain name was registered on September 8, 2018. It resolves to a website which is a very close copy of the Complainant’s website, albeit slightly adapted so that it is focused at an Australian audience. By way of example, the Complainant’s home page features a distinctive design comprising a series of coloured bars placed against a black background. Overlaying this is the claim “FINRA Protects American Investors” in large white text. The words “Splunk and AWS provides visibility into U.S. stock and options market transactions” feature in smaller white text underneath. The Respondent’s home page is effectively identical in appearance, save that the message in large type on the home page has been changed to “FINRA Protects Australia Investors” and the claim beneath that has been changed to “splunkaus and AWS provides visibility into Aus stock and options market transactions”.
5. Parties’ Contentions
The Complainant says that the disputed domain name is confusingly similar to a trade mark or service mark in which it has rights. It draws attention to its portfolio of trade marks and service marks for SPLUNK, full details of one of these marks having been set out above. It says that SPLUNK is an invented, fanciful mark with no meaning in any language. The disputed domain name combines the Complainant’s SPLUNK mark with the common three letter abbreviation for Australia, that is “aus”. This letter choice is purposeful as the Respondent’s “About” page states that its address is North Sydney, Australia. The addition of a term which describes the Complainant’s services increases the similarity between the Complainant’s trade mark and the Respondent’s use of it.
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is unknown to the Complainant, has no relationship with it, and is not authorized by it to use the Complainant’s trade marks or to offer the Complainant’s products or services. Despite this, the Respondent’s website mimics the Complainant’s website and uses exactly the same wording and images, save that the Complainant’s mark SPLUNK has been replaced throughout with “splunkaus”, even where the substitution of “splunkaus” for “SPLUNK” does not make sense.
In addition, the Respondent is not commonly known by the disputed domain name. The SPLUNK trade mark was invented by the Complainant and it is unaware of any other entity which has a business name which includes “Splunk” or which has any trade mark rights in the name “Splunk”. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trade marks. In fact, the disputed domain name is being used by the Respondent to misleadingly divert consumers away from the Complainant’s authentic services by claiming to be the Complainant, when it is not.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered in September 2018, long after the Complainant’s rights first accrued in 2007 with the registration of its first United States service mark. The Respondent’s website mimics that of the Complainant and intentionally creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent additionally misleads visitors in other ways. For example, the Respondent’s supposed customer support number differs from the Complainant’s by only the use of a different area code. See the decision of the panel in EBAY, Inc. v. MEOdesigns and Matt Oettinger, WIPO Case No. D2000-1368, which found bad faith where the domain names and the services offered were similar such that there was “no doubt the Respondent deliberately chose the disputed domain names”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant shall prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
A. Identical or Confusingly Similar
The Complainant has produced evidence of its trade and service mark registrations for SPLUNK, including the mark in respect of which full details are set out above.
In considering whether a domain name is identical or confusingly similar to a complainant’s trademarks, it is established that the applicable generic Top Level Domain (“gTLD”) suffix, that is “.com” in the case of the disputed domain name, is disregarded under this element of the Policy as it is a technical requirement of registration.
The disputed domain name incorporates the Complainant’s registered trade mark for SPLUNK in full and without alteration. The additional letters “aus”, being a well-known abbreviation for “Australia”, do not serve to prevent the disputed domain name from being considered confusingly similar for the purpose of this element of the Policy. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show 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) it can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
So far as the first of these circumstances is concerned, the Respondent’s website is, as the Complainant has explained, effectively a clone of the Complainant’s own website, save that, where the text of the Complainant’s website features its SPLUNK trade mark, this has been replaced in the Respondent’s website with “splunkaus”. Section 2.2 of the WIPO Overview 3.0, explains that, among the factors which would typically be required as evidencing demonstrable preparations to use, a domain name in connection with a bona fide offering of goods or services is “other evidence generally pointing to a lack of cybersquatting intent”. The evidence in these proceedings points in the other direction; the Respondent’s intention is plainly to deceive Internet users into thinking that the website to which the disputed domain name resolves is either the Complainant’s website or is operated with its authority and approval. Accordingly, its website does not comprise a bona fide offering of goods or services.
The other circumstances set out at paragraph 4(c) of the Policy are also inapplicable; there is no evidence that might suggest that the Respondent has been commonly known by the disputed domain name. Similarly, the Respondent’s use of the disputed domain name is neither noncommercial in character, nor does it comprise fair use.
There is nothing to suggest that the Respondent might be able to establish rights or legitimate interests in the disputed domain name on any other basis and, indeed, it has not attempted to do so. The Panel therefore finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name comprises the Complainant’s distinctive SPLUNK trade mark followed by the letters “aus”. The disputed domain name resolves to a website which the Respondent has copied from the Complainant’s website. These factors in combination establish an awareness by the Respondent of the Complainant and its business as at the date of registration of the disputed domain name. The registration of a domain name with the knowledge of the Complainant’s trademark registration is suggestive of bad faith. See section 3.1.4 of the WIPO Overview 3.0: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.
The distinctive character of the Complainant’s mark is such that the disputed domain name will suggest to many Internet users aware of the Complainant, that any website to which it resolves, is operated by the Complainant and is likely to relate to business which it conducts in Australia. The content of the website which the Respondent has established will reinforce this impression.
Paragraph 4(b)(iv) of the Policy provides, in summary, that it will be evidence of bad faith registration and use by a respondent, if, by using a domain name, has intentionally attempted to attract, for commercial gain, Internet users to the website to which the domain name resolves by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
Section 3.1.4 of the WIPO Overview 3.0 provides examples of evidence which might support a finding of bad faith registration by a respondent under this sub-paragraph of the Policy. Among these factors are evidence that a respondent has been seeking to cause confusion for its own commercial benefit, the lack of a respondent’s own rights to or legitimate interests in the domain name, and the absence of any conceivable good faith use to which the respondent could put the domain name.
Each of these elements is present in the Respondent’s use of the disputed domain name. The cloned website creates the impression that “splunkaus”, is offering the same services as those offered by the Complainant. It is therefore inevitable that confusion will be caused to Internet users familiar with the Complainant and its products and it is evident that the Respondent has intended to create that confusion for the purpose of commercial gain. For this reason, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <splunkaus.com> be transferred to the Complainant.
Date: March 5, 2019