WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Proton Technologies AG v. Fahim Tajwer Anik
Case No. D2020-0311
1. The Parties
The Complainant is Proton Technologies AG, Switzerland, represented by Andy Yen, Switzerland.
The Respondent is Fahim Tajwer Anik, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <protonescrow.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2020. On February 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2020, 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 February 13, 2020 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 February 13, 2020.
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 February 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2020.
The Center appointed Luca Barbero as the sole panelist in this matter on March 13, 2020. 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 Swiss corporation providing a secure email service under the trademark PROTONMAIL.
The Complainant is the owner of several trademark registrations for PROTONMAIL, including the following, as per trademark certificates submitted as annexes 4 to the Complaint:
- United States trademark registration No. 4751245 for PROTONMAIL (word mark), registered on June 9, 2015, in International class 38;
- United States trademark registration No. 4754889 for QPROTONMAIL (figurative mark), registered on June 16, 2015, in International class 38;
- European Union trademark registration No. 01788417 for PROTONMAIL (word mark), registered on July 25, 2018, in class 38;
- European Union trademark registration No. 017886420 for PROTONMAIL (figurative mark), registered on August 20, 2018, in classes 38 and 42;
- Swiss trademark registration No. 662183 for PROTONMAIL (figurative mark), registered on August 12, 2014, in classes 38 and 42.
The Complainant is also the owner of the domain name <protonmail.com>, which was registered on August 21, 2010 and is used by the Complainant to provide its email service to Internet users under the trademark PROTONMAIL.
The disputed domain name <protonescrow.com> was registered on December 8, 2019 and is currently not pointed to an active website. According to the screenshots submitted by the Complainant, which have not been challenged by the Respondent, the disputed domain name was previously redirected by the Respondent to a website promoting an alleged “ Bitcoin & Cryptocurrency escrow service” and reproducing the Complainant’s visuals and the core of the Complainant’s figurative trademark “Proton”.
5. Parties’ Contentions
The Complainant contends that disputed domain name <protoescrow.com> is confusingly similar to the trademark PROTONMAIL in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive term “escrow” and the generic Top Level Domain (“gTLD”) “.com”.
The Complainant also asserts that its products are renown and easily identified with the term "Proton", especially in the areas of consumer security and encryption. Moreover, the Complainant highlights that its trademark and the term “Proton” do not correspond to a common term or phrase.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent has never been commonly known by the disputed domain name nor has it ever acquired trademark or service rights, as the Complainant is currently the only company holding trademark rights for PROTONMAIL.
The Complainant further submits that, although the Respondent seems to be using the disputed domain name in connection with the offering of "Bitcoin & Cryptocurrency escrow services", this offering is made by misrepresenting an association with the Complainant’s trademark and, therefore, does not qualify as a bona fide offering of goods and services. In addition, the Complainant highlights that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, as there is no evidence of legitimate fair use since its registration.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, through the use of the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a high likelihood of confusion with the Complainant's trademark and services, trying to pass as the Complainant in the eyes of Internet users.
The Complainant emphasizes that the fact that the Respondent used the Complainant's figurative trademark on the website to which the disputed domain name resolves also demonstrates that it could not have ignored the existence of the Complainant's rights at the time of the registration and that, especially considering the notoriety of the Complainant and its services, it is clear that the Respondent knew or should have known of the existence of the Complainant’s trademarks.
The Complainant underlines that, in view of the above, the Respondent knowingly registered the disputed domain name to attract traffic from the Complainant's well-known and established website and trademarks, by creating a likelihood of confusion in order to obtain commercial gain.
Moreover, the Complainant submits that the use by the Respondent of the same color theme and of the Complainant's graphic trademark and visual codes, clearly shows an intent for illicit gain, whilst diverting consumers by exploiting the similarity to the Complainant's mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the case at hand, the Panel finds that the Complainant has established rights over the trademark PROTONMAIL, based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 4 to the Complaint. The Panel also notes that the disputed domain name is confusingly similar to the registered trademark PROTONMAIL owned by the Complainant, since it reproduces the core of the Complainant’s trademark PROTON with the sole addition of the dictionary term “escrow” and the gTLD “.com”, which can be both disregarded in the assessment of the first requirement.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the registered trademarks in which it has established rights as prescribed by paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondent.
Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
In addition, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Fahim Tajwer Anik, might be commonly known by the disputed domain name.
The Panel also finds that the Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use, as the Respondent, by reproducing the core of the Complainant’s trademarks and the look and feel of the Complainant’s website on the webpage to which the disputed domain name resolved, has clearly impersonated the Complainant in an attempt to attract users for commercial gain and promote its “Bitcoin & Cryptocurrency escrow service”.
See, along these lines, section 2.13.1 of the WIPO Overview 3.0: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
As to the bad faith at the time of the registration, the Panel notes that, in light of the prior registration and use of the Complainant’s trademark PROTONMAIL in connection with the widely known email service of the Complainant, the Respondent was or ought to be aware of the Complainant’s trademark. The circumstance that the disputed domain name has been pointed to a website reproducing the core of the Complainant’s figurative mark PROTONMAIL and the Complainant’s visuals, shows that the Respondent indeed intended to target the Complainant and its trademarks.
The Panel also notes that, in view of the use of the disputed domain name to divert users to the website described above, promoting the Respondent’s commercial service and referring also to the Complainant’s trademark and service, the Respondent intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and the service provided therein, according to paragraph 4(b)(iv) of the Policy. In view of the above, the Panel finds that the Complainant has also proven the requirement prescribed by 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 disputed domain name <protonescrow.com> be transferred to the Complainant.
Date: March 27, 2020